Google Inc. v. Domain Admin, C/O ID#10760 / Privacy Protection Service INC d/b/a PrivacyProtect.org
Claim Number: FA1705001732138
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, United States. Respondent is Domain Admin, C/O ID#10760 / Privacy Protection Service INC d/b/a PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-spain.com>, registered with Tecnocrática Centro de Datos, S.L.
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 May 17, 2017; the Forum received payment on May 17, 2017.
On May 19, 2017, Tecnocrática Centro de Datos, S.L. confirmed by e-mail to the Forum that the <google-spain.com> domain name is registered with Tecnocrática Centro de Datos, S.L. and that Respondent is the current registrant of the name. Tecnocrática Centro de Datos, S.L. has verified that Respondent is bound by the Tecnocrática Centro de Datos, S.L. 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 May 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@google-spain.com. Also on May 22, 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 June 15, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant operates a leading internet search engine and offers a wide range of Internet-related products and services under its mark. Complainant registered the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of its business. See Compl., at Attached Annex 8 (Reg. No. 2,806,075, registered on Jan. 20, 2004). Respondent’s <google-spain.com> domain name is confusingly similar to Complainant’s GOOGLE mark because it incorporates the mark in its entirety and merely adds the geographical location “spain,” a hyphen, and the generic top-level domain name (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the <google-spain.com> domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its GOOGLE mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. Respondent uses the disputed domain name to divert Internet users to its website which offers services that compete with Complainant. See Compl., at Attached Annex 9-10. Respondent attempts to pass off as Complainant by prominently displaying Complainant’s GOOGLE mark, along with its characteristic colors, on its website. Id. Furthermore, anti-virus software indicates that the website is associated with malware or phishing. See Compl., at Attached Annex 11.
Respondent has registered and is using the <google-spain.com> domain name in bad faith. Correspondence with Respondent and the use of Complainant’s mark on Respondent’s website indicates that Respondent had actual knowledge of Complainant’s rights. Even constructive knowledge can establish a finding of bad faith and the distinctive nature of Complainant’s mark demonstrates that Respondent had at least constructive knowledge. Further, Respondent disrupts Complainant’s business by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name, for commercial gain of the Respondent. Relatedly, Respondent uses the disputed domain name to host a website associated with malware and phishing, which damages Complainant’s goodwill. See Compl., at Attached Annex 11. Finally, Respondent uses Complainant’s marks in attempts to pass off as Complainant. See Compl., at Attached Annex 9-10.
B. Respondent:
Respondent did not submit a response in this proceeding.
However, on June 6, 2017, Respondent sent to the Forum an email stating as follows :
“Hello good day, Sorry, we did not answer them any faster, I was on a business trip. Our company based in Spain is the owner of the domain www.google-spain.com for almost 10 years, at no time we have been no competition from google or anything like that. What's more, we are dedicated to a computer sector completely different from them serving our customers for many years. We received an email in the day telling us to transfer this domain to google, which we can not do since our company is the owner. Like everything in this world, you could reach an agreement but you will understand that we can not so happily transfer a part of our company after so many years of integration in our sector. Sincerely, a cordial greeting.
Francesc Calderita
Manager
Móvil - 640 053 418”.
The Panel will consider that communication and take it into account in the course of its deliberations.
Complainant submits that the proceeding should be conducted in the English language, presumably on the basis that the Registration Agreement is in Spanish but that the Panel should exercise its discretion to order that the proceedings be in English. Complainant has submitted as follows:
“Rule 11(a) allows the Panel to determine the language of the proceeding considering the totality of the circumstances. Google Inc. v. Popov Vitaly, FA1710030 (Forum February 16, 2017). See, generally, Rule 11 (a) (“the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”)”.
It is apparent from the email referred to above that Respondent is able to conduct the proceeding in English. It should also be noted that on an earlier occasion, January 30, 2017, Respondent sent an email to Complainant stating as follows :
“Hello, Good morning, soon the logo in question will be removed. We would also love to be able to distribute your products in Spain, so we would like to reach a commercial agreement with you in order to distribute all your services. We are waiting for your news. Greetings.“
Both emails show that Respondent is conversant with the English language. The Panel therefore finds that it is convenient and appropriate in all the circumstances that the proceeding should be conducted in English. In the exercise of its discretion the Panel directs that the proceeding be conducted in the English language.
1. Complainant is a prominent United States company that operates a leading internet search engine and offers a wide range of Internet-related products and services under its mark.
2. Complainant registered the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of its business. (Reg. No. 2,806,075, registered on Jan. 20, 2004).
3. Respondent registered the disputed domain on October 17, 2013.
4. Respondent uses the disputed domain name to divert Internet users to its website which offers services that compete with Complainant, attempts to pass itself off as Complainant and operates a website associated with malware or phishing.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts that it has established rights in the GOOGLE mark via its registration with the USPTO. See Compl., at Attached Annex 8 (Reg. No. 2,806,075, registered on Jan. 20, 2004). Registration of a mark with the USPTO sufficiently establishes rights in that mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore the Panel finds that Complainant has established rights in the GOOGLE mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GOOGLE mark.Complainant argues that the <google-spain.com> domain name is confusingly similar to Complainant’s GOOGLE mark because it incorporates the mark in its entirety and merely adds the geographical location “spain,” a hyphen, and the gTLD “.com.” The addition of a geographical location, a hypen, and a gTLD is not sufficient to distinguish the disputed domain name from Complainant’s mark. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also 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). In particular, the addition of the word “spain” to the trademark in the present case would merely encourage users to assume that the domain name was an official domain name of Complainant dealing with its activities in Spain. Similarly, the addition of a gTLD is irrelevant to an analysis of confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s GOOGLE mark.
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 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.”).
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 GOOGLE mark and to use it in its domain name adding the geographic indicator “spain”;
(b) Respondent registered the domain name on October 17, 2013;
(c) Respondent uses the domain name to divert Internet users to its website which offers services that compete with Complainant, attempts to pass itself off as Complainant and operates a website associated with malware or phishing;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use its GOOGLE mark. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether Respondent is 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). The WHOIS information on record lists “Domain Admin, C/O ID#10760 / Privacy Protection Service INC d/b/a PrivacyProtection.org” as the registrant name. See Compl., at Attached Annex 4. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the GOOGLE mark further supports a finding that Respondent does not have rights or legitimate interests in the 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). Therefore, the Panel finds that Respondent is not commonly known by the <google-spain.com> domain name;
(f) Complainant argues that Respondent does not use the <google-spain.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. Rather, Complainant submits that Respondent uses the disputed domain name to divert Internet users to a website offering services that directly compete with Complainant. Using a disputed domain name to divert Internet users to a competing website is not considered a bona fide offering of goods or services or a legitimate noncommercial fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Complainant provides a screenshot of the resolving webpage for the disputed domain name. See Compl., at Attached Annex 10. The resolving webpage prominently displays Complainant’s mark and designs, has a sign in option, and links to other webpages. Id. The Panel finds that Respondent uses the disputed domain name to offer competing services, which fails to provide a bona fide offering of goods or services or legitimate noncommercial or fair use;
(g) Complainant also submits that Respondent uses the disputed domain name to put malware on users’ computers and phish for personal information. Hosting a website affiliated with malware and phishing for users’ information can support a finding that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See Google Inc. v. Gridasov, FA 474816 (Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website . . . [which] may annoy or harm the users in some way . . . is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”). Complainant submits that when users click on the sign in option located on the resolving webpage for the disputed domain name, anti-virus software indicates that the resolving website is “dangerous” because of a possible association with malware or phishing. See Compl., at Attached Annex 11-12. The resolving website prominently displays the GOOGLE logo, with its characteristic colors, and such association with a “dangerous” website could damage Complainant’s reputation. Compare Compl., at Attached Annex 5 (displaying the GOOGLE logo with its characteristic colors) with Compl., at Attached Annex 9 (showing that resolving website displays the GOOGLE logo) and Compl., at Attached Annex 11-12 (showing that anti-virus software indicates that resolving website is “dangerous”). Therefore, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use;
(h) Complainant argues that Respondent is attempting to pass itself off as Complainant and therefore is not using the disputed domain name for any bona fide offering of goods or services or a legitimate noncommercial or fair use. An attempt to pass off as a complainant, especially when such passing off is done by borrowing a color scheme and logo associated with Complainant, precludes any finding that Respondent is using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Respondent imitates Complainant by prominently displaying Complainant’s logo and corresponding color scheme on its website. See Compl., at Attached Annex 9. Therefore, the Panel finds that Respondent is attempting to pass itself off as Complainant and therefore is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use.
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 does not have a right or legitimate interest in the disputed domain name. Respondent has sent to the Forum the email referred to above. However, that email does not contain anything to suggest that Respondent has a right or legitimate interest in the domain name or any other defence to the Complaint. Indeed, the Panel notes that the email contains the statement that “you will understand that we can not so happily transfer a part of our company after so many years of integration in our sector...” which seems to the Panel to invite a payment for transferring the domain name which would of course negate any defence that Respondent might have.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the <google-spain.com> domain name in bad faith by creating a likelihood for confusion as to the affiliation of the disputed domain name to benefit itself commercially by offering competing goods or services. Commercially benefiting via initial interest confusion can evince bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); 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).”). Complainant provides a screenshot of the resolving webpage for the disputed domain name, which shows that Respondent prominently displays Complainant’s mark and design, presumably to offer competing services. SeeCompl., at Attached Annex 9. The Panel therefore finds that Respondent attempted to benefit itself commercially off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent attempts to pass itself off as Complainant. Attempting to pass off as Complainant can evidence bad faith. See Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”). As noted previously, Complainant provides screenshots of , which demonstrates that Respondent prominently displays Complainant’s GOOGLE mark, with its characteristic colors, on the resolving website. See Compl., at Attached Annex 9. Therefore, the Panel finds that Respondent attempts to pass itself off as Complainant in bad faith.
Thirdly, Complainant argues that Respondent had either actual or constructive notice of Complainant rights in the GOOGLE mark. Panels often disregard arguments of bad faith based on constructive notice as UDRP decisions decline 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 and finds that actual knowledge does adequately evince 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). The Panel infers from the fame of the GOOGLE mark that Respondent had actual knowledge of Complainant’s rights and therefore that Respondent registered and is using the disputed domain name in bad faith.
Fourthly, Complainant argues that Respondent’s use of the disputed domain name to resolve to a website associated with malware or phishing demonstrates bad faith registration and use. Using a disputed domain name to resolve to a website associated with either malware or phishing can support a finding of bad faith. See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant offers that when it attempts to access part of the disputed domain name, its anti-virus software indicates that the website is associated with malware or phishing. See Compl., at Attached Annex 12. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith by engaging in a phishing scheme.
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 name using the GOOGLE mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it 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 <google-spain.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: June 16, 2017
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