Google Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1704001726692
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 NAME
The domain name at issue is <gmail-support.org>, registered with Internet Domain Service BS Corp.
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 12, 2017; the Forum received payment on April 12, 2017.
On April 18, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <gmail-support.org> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@gmail-support.org. Also on April 18, 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 16, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is an online services provider which provides search, advertising, and various other services to Internet users. In connection with this business, Complainant uses the GMAIL mark to operate, promote, and support a free, web-based email service. Complainant has rights to the GMAIL mark based upon numerous registrations in the USA dating back to 2007. The mark is also registered elsewhere around the world. The mark is famous.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s GMAIL mark, as the disputed domain name contains the mark in its entirety, merely adding the descriptive term “support,” a hyphen, and the generic top-level domain name (“gTLD”) “.org.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the GMAIL mark in any way. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name redirects Internet users to a website that purports to offer technical support for Complainant’s GMAIL service. Complainant argues that Respondent is likely using the disputed domain name to pass off as Complainant and run a phishing scheme. Even if the website is not part of a phishing scheme, the services Respondent purports to provide would directly compete with those offered by Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith. To the extent Respondent offers any legitimate commercial services in connection with the disputed domain name, such services would be in direct competition with those offered by Complainant. Additionally, Respondent appears to further evince its bad faith by its use of the disputed domain name as part of a phishing scheme. 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 GMAIL mark. Finally, registration of domain names incorporating such a well-known mark suggests opportunistic bad faith. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark GMAIL, with rights dating back to 2007. The mark is famous.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a web site that offers services that compete with those of 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 (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 name is confusingly similar to Complainant’s GMAIL mark. It differs from the GMAIL mark by inserting the descriptive term “support”, with a hyphen. Panels have determined that domain names are confusingly similar to a mark where the domain names consisted of a mark or marks, the addition of descriptive terms of Complainant’s business with hyphens, and a gTLD. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the GMAIL mark in any way. Respondent is not commonly known by the disputed domain name: the WHOIS information of record identifies Respondent as “Domain Admin, Whois Privacy Corp.” 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). 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 name.
Complainant alleges—without providing evidence—that Respondent is selling personal information collected from misdirected Internet users as part of a phishing scheme. However, the Panel notes that the Disclaimer at the bottom of Respondent’s web site states:
We are Third party & independent service provider for Gmail users & Google products. We don’t use third Party trademarks & logos. We only use Google or Gmail words for informational purpose only & at no point verbally or in writing claim “We are Google or Gmail”. Our Gmail Tech Support does not sponsor their product or services, we are paid support and charge for help provided to Gmail users. Thus, we hereby disclaim any sponsorship, affiliation and endorsement of or by Google with our Gmail Tech Support site. Our agents request some personal information as name, address, PC model, brand and technical programming. We don’t use any of your personal information for any promotion of upselling purpose. We don’t even sell any data to any other third party for any purpose.
Consequently, the Panel does not accept Complainant’s allegations regarding phishing.
However, Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain names resolves to a website which prominently displays the GMAIL word and design marks and purports to offer various technical support services for the GMAIL service. To the extent that Respondent actually offers legitimate services at the resolving website, the services would compete directly with Complainant’s business. Use of an identical or confusingly similar domain name to pass off as a complainant and compete with the complainant’s business is not a use indicative of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use). Consequently, the Panel finds that Respondent’s use of the disputed domain names is evidence of its lack of rights or legitimate interests and failure to use the names to make a bona fide offer of goods or services or for a legitimate non-commercial or fair use.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its 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, as noted above, to the extent that Respondent offers legitimate commercial services in connection with the disputed domain name, such services compete directly with Complainant’s own offered services. Use of a disputed domain name to offer services which compete with Complainant’s, for Respondents benefit, is evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Therefore, the Panel finds Respondent to have acted in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
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.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 16, 2017
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