Google Inc. v. Will Maluk
Claim Number: FA1704001725065
Complainant is Google Inc. (“Complainant”), represented by Jonathan S. Batchelor of Dickson Wright PLLC, Arizona, USA. Respondent is Will Maluk (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlecardboardporn.com> and <porngooglecardboard.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2017; the Forum received payment on April 3, 2017.
On April 4, 2017 and Apr 12, 2017 respectively, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <googlecardboardporn.com> and <porngooglecardboard.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 April 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@googlecardboardporn.com, and postmaster@porngooglecardboard.com. Also on April 13, 2017, 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 May 15, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it and its name GOOGLE were created in 1997. Since that time, the Google search engine has become one of the most highly recognized Internet search services in the world. Complainant offers a wide range of Internet-related products and services, including online advertising services, cloud services, a social networking platform, translation services, mapping services, and Internet browser software. In 2014, Complainant released the GOOGLE CARDBOARD platform, a mobile app and accessory that allows users to convert their cell phones into virtual reality viewers. It has been called “one of the most important, quirky, and ingenious advances in consumer VR”. The GOOGLE CARDBOARD product has been wildly popular, quickly attracting over 10 million users. Complainant has rights to the GOOGLE CARDBOARD mark based upon its registration in the United States. The filing date was February 25, 2015, with first use in 2014. Complainant also registered the mark CARDBOARD with filing date January 20, 2016, and owns the mark GOOGLE, with rights dating back to 1998. The mark GOOGLE is registered around the world and it is famous. The GOOGLE mark has been found to be one of the top five Most Valuable Global Brands since 2001, with Forbes ranking the GOOGLE mark as the world’s second most valuable brand in 2016, valued at $82.5 billion, and BrandZ ranking the GOOGLE mark as the most valuable global technology brand in 2016.
According to Complainant, the disputed domain names are confusingly similar to its GOOGLE and GOOGLE CARDBOARD marks, as each of the disputed domain names contain the mark in its entirety—less the space—merely adding the descriptive word “porn” at the beginning in one instance, and at the end in the alternate, and, in the case of the GOOGLE mark, adding the generic term “cardboard”. Additionally both disputed domains make use of the generic top-level domain name (“gTLD”) “.com.”
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its marks in any way. Respondent’s 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. Rather, the disputed domain name <googlecardboardporn.com> is used to distribute pornography. The disputed domain name <porngooglecardboard.com> resolves to a parked holding page. Both pornography distribution and blank holding pages do not amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Further, says Complainant, Respondent has registered and used the disputed domain names in bad faith. Respondent’s registration of multiple domain names incorporating Complainant’s marks indicates such registrations to be part of a pattern of bad faith registration. The web sites to which both of the disputed domain names resolve attract and confuse Internet users for commercial profit, indicative of bad faith registration and use under Policy ¶ 4(b)(iv). The use of the active <googlecardboardporn.com> domain to distribute pornography is additional evidence of bad faith. Further, it is clear that Respondent registered and subsequently used the disputed domain names with actual or constructive knowledge of Complainant and Complainant’s rights in the GOOGLE and GOOGLE CARDBOARD marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks GOOGLE and GOOGLE CARDBOARD, with rights dating back, respectively to 1998 and February 25, 2015. The mark GOOGLE is famous.
The disputed domain name <googlecardboardporn.com> was registered April 20, 2016; <porngooglecardboard.com> was registered August 28, 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name <googlecardboardporn.com> is being used to distribute pornography. The disputed domain name <porngooglecardboard.com> is not being used.
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.”).
The disputed domain names <googlecardboardporn.com> and <porngooglecardboard.com> are confusingly similar to Complainant’s marks GOOGLE and GOOGLE CARDBOARD. They incorporate the mark in its entirety merely adding the descriptive word “porn” at the beginning in one instance, and at the end in the alternate, or, in the case of the mark GOOGLE, they add the descriptive term “cardboard”. The relevant date for the mark GOOGLE CARDBOARD is the filing date, see Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The inclusion of the descriptive words “porn” and “cardboard” are insufficient to distinguish the domain name from the mark GOOGLE under Policy ¶ 4(a)(i) analysis for confusing similarity. See Mattel, Inc. v. domainsforsalenow@hotmail.com, FA 187609 (Forum Oct. 6, 2003) (“Respondent has merely added the descriptive word ‘porn’ to Complainant's registered BARBIE mark, and the addition of this word does not create a notable distinction between Complainant's mark and the domain name currently in dispute.”); see also Google Inc. v. signupgoogleadsense, FA1474818 (Forum Jan. 22, 2013) (“The addition of a generic term does not adequately distinguish Respondent’s domain name from Complainant’s marks under Policy ¶ 4(a)(i).”). Finally, omission of spacing in a mark and addition of a gTLD are irrelevant in a Policy ¶ 4(a)(i) analysis for confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that the disputed domain names are confusingly similar to the GOOGLE and GOOGLE CARDBOARD marks per Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or permitted Respondent to use its marks. Respondent is not commonly known by the disputed domain name: the WHOIS information of record identifies Respondent as “Will Maluk.” Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. 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). In addition, failure to establish authorization approval for a Respondent to use Complainant’s mark can be evidence of a lack of rights or legitimate interests in a confusingly similar domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names.
Respondent uses the <googlecardboardporn.com> to distribute pornography. The use of a domain name to link Internet traffic to an adult oriented website does not constitute a bona fide offering of goods or services or a noncommercial fair use. See Google Inc. v. Chris Gillespie, FA1434643 (Forum May 10, 2012) (“[T]he Panel finds that the previous use of the disputed domain names (resolving to adult oriented websites) is…evidence of Respondent’s lack of rights and legitimate interests in the domain names.”). The disputed domain name <porngooglecardboard.com> resolves to a parked holding page. Panels have found the non-use of a domain name, which incorporates a complainant’s mark, as unsatisfactory in establishing a bona fide offering of goods or services. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Since pornography distribution and blank holding pages do not amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, Respondent’s use of the <googlecardboardporn.com> domain to distribute pornography is evidence of bad faith use. See Microsoft Corp. v. Private Registrant, FA1105001390487 (Forum June 20, 2011)(“the Panel finds that Respondent’s use of [<microsoftporn.com>] to redirect Internet users to a site offering adult oriented material constitutes bad faith registration and use under Policy ¶4(a)(iii)”). Consequently, the Panel finds that Respondent registered and is using the disputed domain name <googlecardboardporn.com> in bad faith under Policy ¶ 4(a)(iii).
Further, Respondent uses the <googlecardboardporn.com> to attract and confuse Internet users for commercial profit, indicative of bad faith registration and use. Panels have found efforts to increase profits for its business by creating consumer confusion and using Complainant’s mark indicate bad faith registration and use according to Policy ¶ 4(b)(iv). See Victoria’s Secret Stores Brand Management, Inc. v. Lewis, FA1337417 (Forum Sep. 2, 2010) (finding that the similarity of respondent’s domain name and complainant’s mark evidenced an intention by respondent to capitalize on complainant’s fame and to profit by attracting Internet users to respondent’s website, revealing bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv)). Therefore the Panel finds Respondent to have acted in bad faith pursuant to Policy ¶ 4(b)(iv) with respect to the domain name <googlecardboardporn.com>.
The domain name <porngooglecardboard.com> is not being used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, Complainant’s trademark GOOGLE is famous. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint, the disputed domain names were registered with a privacy service, and the Respondent used the other, related, domain name in bad faith, as indicated above. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name <porngooglecardboard.com> is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlecardboardporn.com> and <porngooglecardboard.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 15, 2017
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