Google Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1612001708172
Complainant is Google Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmailsupportusa.com>, <gmail-support-numbers.com>, <gmail-support.net>, <gmailhelplinenumbers.com>,and <gmailsupportnumbers.net>, registered with Internet Domain Service BS Corp; TLD Registrar Solutions Ltd.
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 December 16, 2016; the Forum received payment on December 16, 2016.
On December 27, 2016, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <gmail-support.net> and <gmailsupportnumbers.net> domain names are registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the names. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions 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”). Registrar Internet Domain Service BS Corp failed to timely respond to requests for verification with regards to the <gmailsupportusa.com>, <gmail-support-numbers.com> and <gmailhelplinenumbers.com> domain names.
On December 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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@gmailsupportusa.com, postmaster@gmail-support-numbers.com, postmaster@gmail-support.net, postmaster@gmailhelplinenumbers.com, postmaster@gmailsupportnumbers.net. Also on December 28, 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 January 30, 2017, 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 made the following contentions.
Complainant, Google, Inc., is a technology and internet services corporation. In connection with this business, Complainant owns and operates its GMAIL service to provide free, web-based email services; and provides its users with the “Gmail Help Center” to provide support and information regarding, among other topics, GMAIL accounts, messages, contacts, and technical issue troubleshooting. Complainant has rights to the GMAIL mark based upon registration with the United States Patent and Trademark Office, (“USPTO”) as well as other trademark agencies throughout the world (e.g. Reg. No. 3,150,462, registered Oct. 3, 2006). See Compl., at Attached Ex. 6. The disputed domain names are confusingly similar, as they contain the GMAIL mark in its entirety, differing only through the addition of one or more of the generic or descriptive terms “help,” “support,” “line,” and “number;” and/or the geographic term “usa.” Two of the domains include hyphens, and all append a generic top-level domain (“gTLD”); either “.com” or “.net.”
Respondent has no rights or legitimate interests in the <gmailsupportusa.com>, <gmail-support-numbers.com>, <gmail-support.net>, <gmailhelplinenumbers.com> or <gmailsupportnumbers.net> domain names. Respondent is not commonly known by any of the domain names, nor has Complainant authorized or licensed Respondent to use any of its marks in any way. Respondent’s <gmailsupportusa.com> domain name resolves to a website featuring the GMAIL mark in attempt to pass itself off as Complainant, either to sell personal information collected from misdirected users, or offer services which compete with Complainant’s business. The remaining disputed domain names remain inactive, and Respondent has shown no effort or activity in trying to create and utilize the domain names. Respondent’s use, or non-use, of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain names in bad faith. Respondent’s registration of multiple domain names that contain Complainant’s GMAIL mark is evidence of bad faith pursuant to Policy ¶ 4(b)(ii). Also, to the extent that Respondent offers any legitimate commercial services in connection with the disputed domain names, such services compete directly with Complainant’s own Gmail Help Center, evidence of Policy ¶ 4(b)(iii) & (iv) bad faith. Further, it is impossible to conceive of any potential legitimate use of the disputed domain names, which include Complainant’s famous GMAIL mark. This suggests opportunistic bad faith. Finally, due to the fame and uniqueness of the GMAIL mark, Registrant had actual or constructive knowledge of Complainant’s rights in the mark at the time Respondent registered and subsequently used the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the business of a technology and internet services corporation including its GMAIL service.
2. Complainant has trademark rights to the GMAIL mark based upon its registration with the United States Patent and Trademark Office, (“USPTO”) as well as other trademark agencies throughout the world (e.g. Reg. No. 3,150,462, registered Oct. 3, 2006).
3. Respondent registered the <gmailsupportusa.com> domain name on November 24, 2015; and the <gmail-support-numbers.com>, <gmail-support.net>, <gmailhelplinenumbers.com> and <gmailsupportnumbers.net> domain names on November 26, 2015.
4. The <gmailsupportusa.com> domain name resolves to a website featuring the GMAIL mark in an attempt to pass itself off as Complainant, either to sell personal information collected from misdirected users, or offer services which compete with Complainant’s business. The remaining disputed domain names remain inactive, and Respondent has shown no effort or activity in trying to create and utilize the domain names.
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 (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 proceeding, Complainant has submitted that Respondent is a single individual and/or entity who registered the Domain Names under the same privacy protection service in order to avoid detection and conceal its true identity and location. Complainant contends that this submission is supported by the fact that the disputed domain names were registered under the same privacy protection service within a span of two days in 2015, as reflected in the WHOIS information of record. The Disputed domain names additionally share the same name server location. See Compl., at Attached Ex. 4. Complainant also contends that all of the disputed domain names were registered with the same registrar, though there are two different registrars listed in the WHOIS information of record.
The Panel therefore finds that the domain names are registered by the same domain name holder within the meaning of Paragraph 3(c) of the Rules and that it is, as Complainant submits, appropriate to proceed in a single Complaint.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims rights in the GMAIL mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,150,462, registered Oct. 3, 2006). See Compl., at Attached Ex. 6. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore holds that Complainant’s registration of the GMAIL mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <gmailsupportusa.com>, <gmail-support-numbers.com>, <gmail-support.net>, <gmailhelplinenumbers.com> and <gmailsupportnumbers.net> domain names are identical or confusingly similar to Complainant’s GMAIL mark. Complainant argues that the disputed domain names are confusingly similar to the GMAIL mark. Respondent’s <gmailsupportusa.com>, <gmail-support-numbers.com>, <gmail-support.net>, <gmailhelplinenumbers.com> and <gmailsupportnumbers.net> domain names all contain the GMAIL mark in its entirety, merely adding generic or descriptive words, hyphens, and either the “.net” or “.com” gTLD. Hyphens and gTLDs are irrelevant in a Policy ¶ 4(a)(i) analysis for confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Additionally, the domain names contain the generic or descriptive words “help,” “support,” “line,” and “number;” and/or the geographic term “usa.” Addition of generic, descriptive, or geographic terms does not distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, the Panel finds all of the disputed domains are confusingly similar to Complainant’s GMAIL mark pursuant to 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 (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.”).
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 simply added the generic or descriptive words “help,” “support,” “line,” and “number” and/or the geographic term “usa”, none of which detracts from the confusing similarity that is clearly present;
(b) Respondent registered the <gmailsupportusa.com> domain name on November 24, 2015; and the <gmail-support-numbers.com>, <gmail-support.net>, <gmailhelplinenumbers.com> and <gmailsupportnumbers.net> domain names on November 26, 2015;
(c) The <gmailsupportusa.com> domain name resolves to a website featuring the GMAIL mark in an attempt to pass itself off as Complainant, either to sell personal information collected from misdirected users, or offer services which compete with Complainant’s business. The remaining disputed domain names remain inactive, and Respondent has shown no effort or activity in trying to create and utilize the domain names;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the GMAIL mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Domain Admin” with “Whois Privacy Corp.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names;
(f) Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by its failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <gmailsupportusa.com> domain name redirects to a website which prominently displays the GMAIL mark and purports to offer GMAIL technical support and password recovery. See Compl., at Attached Ex. 7. Complainant submits that Respondent sells personal information, such as confidential GMAIL passwords, collected at this website; and even if Respondent does offer legitimate technical support services, these services compete directly with Complainant. Use of a domain name to pass off as a complainant and obtain sensitive personal information does not confer rights per Policy ¶¶ 4(c)(i) or (iii). See Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”). Additionally, use of a website to offer services which compete with a complainant’s business is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel therefore finds that Respondent lacks rights or legitimate interests in <gmailsupportusa.com> domain name per Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant also submits that Respondent’s failure to make an active use of the remaining disputed domain names is evidence of its lack of rights or legitimate interests in the domain names. Failure to make an active use of a domain name is evidence of a respondent’s lack of rights or legitimate interests per Policy ¶ 4(c)(i) and (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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’s <gmail-support-numbers.com>, <gmail-support.net>, <gmailhelplinenumbers.com> and <gmailsupportnumbers.net> domain names do not resolve to active webpages. See Compl., at Attached Ex. 8. The Panel therefore finds that Respondent lacks rights or legitimate interests in the <gmail-support-numbers.com>, <gmail-support.net>, <gmailhelplinenumbers.com> and <gmailsupportnumbers.net> domain names due to its failure to make active use of the disputed domain names.
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 argues Respondent has established a pattern of conduct by registering multiple domain names infringing Complainant’s GMAIL mark. Registration of multiple domain names can support a finding of a respondent’s bad faith registration and use under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). In the present case, Respondent is seen to have registered multiple domain names utilizing Complainant’s Mark. Accordingly, the Panel finds Respondent acted in bad faith pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant contends that to the extent Respondent offers any legitimate commercial services in connection with the disputed domain names, such services compete directly with Complainant’s business. Use of a disputed domain to offer services that compete directly with a complainant’s business can be evidence of Policy ¶¶ 4(b)(iii) and (iv) bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel therefore finds Respondent to be acting in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Thirdly, Complainant argues that due to the fame and uniqueness of the GMAIL mark, Respondent’s registration of domain names containing the mark amounts to opportunistic bad faith. The use of a mark connected with well-known products by someone with no connection to the products can be evidence of bad faith per Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the complainant and its products that the use of the domain names by the respondent, who has no connection with the complainant, suggests opportunistic bad faith). The Panel finds Respondent evinces opportunistic bad faith per Policy ¶ 4(a)(iii), and finds accordingly.
Fourthly, Complainant contends that in light of the fame and notoriety of Complainant's GMAIL mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. Lending more credence to this assumption is the fact that Respondent is using the GMAIL mark and logo to pass itself off as Complainant using the <gmailsupportusa.com> domain name. Although prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge, the Panel in this proceeding agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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)."
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 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 <gmailsupportusa.com>, <gmail-support-numbers.com>, <gmail-support.net>, <gmailhelplinenumbers.com> and <gmailsupportnumbers.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 31, 2017
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