Google Inc. v. J Renz
Claim Number: FA1609001694123
Complainant is Google Inc. (“Complainant”), represented by Jonathan S. Batchelor of Dickson Wright PLLC, Arizona, USA. Respondent is J Renz (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googletrust.com> and <googleqq.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2016; the Forum received payment on September 16, 2016.
On September 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googletrust.com> and <googleqq.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 September 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@googletrust.com, postmaster@googleqq.com. Also on September 20, 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.
A timely Response was received and determined to be complete on October 7, 2016.
A timely Additional Submission from Complainant was received and determined to be complete on October 12, 2016.
On October 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant:
1. Complainant, GOOGLE Inc., is an internet search and advertising services provider. Complainant uses the google mark in connection with these services and has rights in the mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,140,793, registered September 12, 2006). Respondent’s domains are nearly identical or confusingly similar to the GOOGLE mark as the <googletrust.com> domain merely adds the non-distinctive term trust and the <googleqq.com> domain merely adds the common initialism “QQ” meaning “questions” or “quick questions.” Neither of these additions to the domains alter the fact that the dominant portion of the domain names is the highly distinctive GOOGLE mark. The inclusion of the generic top-level domain (“gTLD”) “.com” does not affect an analysis of confusing similarity.
2. Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence to suggest that Respondent has ever been identified by the domain names or been commonly known by the disputed domain names. Respondent’s domain names are used to resolve to websites distributing malware which is a use that shows a lack of rights or legitimate interests in the domain names. Additionally, Respondent using the domain names to divert users to websites with commercial advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Respondent’s domain was registered and is being used in bad faith. Respondent’s websites redirect users to third party websites, presumably for the purpose of collecting revenue, and do so in bad faith. Lastly, based on the fame and media recognition of the GOOGLE mark it is impossible to think that Respondent was unaware of Complainant’s mark at the time of registration.
B. Respondent:
1. Respondent’s <googleqq.com> is not confusingly similar to the GOOGLE mark as the “QQ” part of the domain name is the dominant portion.
2. Respondent’s domain names are parked and the content hosted is out of Respondent’s control. Other domain names owned by Respondent with the same parking provider do not have malicious content. Respondent believes that Complainant has the power to cause the malicious content to be displayed and has done so intentionally to weaken Respondent’s case in this proceeding.
3. Respondent has not demonstrated bad faith as Respondent registered <googletrust.com> for the purpose of formally and critically analyzing whether Google can be trusted. Similarly, Respondent registered <googleqq.com> for the purpose of providing a website that allows users to search through QQ messages—QQ as messaging application. Further, the disputed domains are parked and the content that is displayed on the domain names is out of Respondent’s control. Finally, Complainant knew that Respondent controlled the domain names at issue in this proceeding and failed to attempt to acquire them by any other means until the present dispute.
C. Complainant’s Additional Submission:
1. Respondent’s argument that the GOOGLE mark in its domain name <googletrust.com> is used as a generic verb is without merit as it is without support by any evidence and is contradicted by previous holdings. Additionally, Complainant has submitted evidence to show its enforceable rights in the GOOGLE mark. The confusing similarity between the <googleqq.com> domain name and the GOOGLE mark is evident regardless of the presence of the letters “QQ,” and whatever they may be associated with.
2. Respondent has provided no evidence for its purported use for the domain names. Respondent admits that the domain names are parked. Complainant denies interfering with servers to cause malicious content to resolve from the disputed domain names.
3. Respondent’s Response makes clear that Respondent was aware of Complainant’s GOOGLE mark at the time of registration. Complainant has not interfered with Respondent’s websites or domain names.
1. Respondent’s <googletrust.com> and <googleqq.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <googletrust.com> and <googleqq.com> domain names.
3. Respondent registered or used the <googletrust.com> and <googleqq.com> domain names 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 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.
Complainant claims to have rights in the GOOGLE mark based on registration of the mark with the USPTO and other trademark agencies (e.g., Reg. No. 3,140,793, registered September 12, 2006). See Compl., at Attached Annex 10. Panels have routinely concluded, and this Panel may also conclude, that a complainant has rights in a mark based on registration with the USPTO and other trademark agencies. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant also claims that Respondent’s domain names <googletrust.com> and <googleqq.com> are confusingly similar to the GOOGLE mark. Both domains add the gTLD “.com” which prior panels have held is not relevant to an analysis of confusing similarity. See Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The <googletrust.com> domain name differs from the GOOGLE mark through adding the term “trust” to the mark. Panels have held that adding a generic term to a mark in a domain does not prevent a finding of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Respondent’s <googleqq.com> domain name adds the letters “QQ,” apparently standing for “quick questions.” Panels have held that adding letters to a mark in a domain name may allow for a finding of confusing similarity. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark). The Panel finds that Respondent’s domains <googletrust.com> and <googleqq.com> are confusingly similar to the GOOGLE mark for purposes of Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 (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 (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 claims that Respondent has not been authorized to use the GOOGLE mark and has never been commonly known by the disputed domain names. WHOIS information associated with the disputed domain names identifies Respondent as, “J Renz” which does not appear to resemble the disputed domain. See Compl., at Attached Annex 4. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent’s domain names are used to resolve to websites distributing malware which is a use that shows a lack of rights or legitimate interests in the domain names. The Panel notes
Complainant’s Attached Annex 12, showing the website that resolves from the disputed domain name. Panels have held that using a domain name to distribute malicious software shows a lack of rights or legitimate interests in a domain name. See Baker v. J M, FA 1259254 (Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Additionally, Complainant claims that Respondent using the domain names to divert users to websites with commercial advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The only apparent use of the domain that has been shown through evidence is screenshots showing the domain attempting to download software and displaying a message alerting the user to possible infection. See Compl., at Attached Annex 12. Panels have held that such uses are not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Respondent has provided no evidence to support its assertion that the domains have been or were to be used in any manner that could demonstrate rights or legitimate interests. Complainant denies interfering with servers to cause malicious content to resolve from the disputed domain names.
The Panel finds that Respondent’s use is not within the parameters of Policy 4(c)(i) or ¶ 4(c)(iii).
Complainant claims that Respondent’s use of domain names that are confusingly similar to the GOOGLE mark to redirect to third-party websites unrelated to Complainant demonstrates a bad faith attempt to confuse and attract internet users for commercial gain. As stated previously, Respondent’s domain name resolves to websites hosting malicious software or alerting users to the presence of malicious software on their own computers. See Compl., at Attached Annex 12. Panels have held that similar uses are in bad faith. See Google, Inc. v. Petrovich, FA 1339345 (Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). This Panel concludes that Respondent’s use of the disputed domain names demonstrates bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's GOOGLE mark, and Respondent’s admission that it was aware of the mark, it is inconceivable that Respondent registered the <googletrust.com> and <googleqq.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Respondent’s Response makes clear that Respondent was aware of Complainant’s GOOGLE mark at the time of registration. The Panel finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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 <googletrust.com> and <googleqq.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 28, 2016
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