Google Inc. v. Domain Name Privacy Protection
Claim Number: FA1705001732901
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Domain Name Privacy Protection (“Respondent”), Argentina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlepayme.com>, registered with Dattatec.com SRL.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2017; the Forum received payment on May 23, 2017.
On May 23, 2017, Dattatec.com SRL confirmed by e-mail to the Forum that the <googlepayme.com> domain name is registered with Dattatec.com SRL and that Respondent is the current registrant of the name. Dattatec.com SRL has verified that Respondent is bound by the Dattatec.com SRL 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 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@googlepayme.com. Also on May 25, 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 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Language of the Proceeding
1. Complainant respectfully requests that the Panel exercise its authority under Rule 11(a) to determine that the language of the administrative proceeding be English.
2. Under 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.” Rules ¶11(a) (emphasis added). Upon information and belief, the Registration Agreement applicable to the Domain Name is in Spanish. Notwithstanding the language of the registration agreement, however, the Panel has authority pursuant to Rule 11(a) to determine that the administrative proceeding shall be conducted in English. Factors for the Panel to consider in the exercise of that authority include (i) the parties’ abilities to understand and communicate in the languages at issue, (ii) the expense and delay that would result from requiring translations of documents, and (iii) whether each party will have a fair opportunity to present its case with expedition and without suffering prejudice. SWX Swiss Exchange v. SWX Financial LTD, Case No. D2008-0400 (WIPO May 12, 2008).
3. In the present case, Respondent clearly understands English and is comfortable operating in the English language. Indeed, the website resolving from the Domain Name is entirely in English. Moreover, the Domain Name itself is a mere combination of Complainant’s famous GOOGLE mark and two English words, “PAY ME.” Under similar circumstances, Panels have had no difficulty determining that English is a proper language for the administrative proceeding notwithstanding the language of the registration agreement. See, e.g., Teavana Corp. v. Lee Sam Lee Sam, FA1419368 (Forum Feb. 22, 2012) (conducting the proceeding in English despite a Korean-language registration agreement, referencing the fact that the disputed domain name resolved to an English-language website); Norgren, Inc. v. Lars Landefeld, FA1330274 (Forum July 29, 2010) (designating English as the language of the proceeding despite the fact that the registration agreement was in German, considering the fact that the disputed domain names were in English, among other factors); SWX Swiss Exchange, Case No. D2008-0400 (WIPO May 12, 2008) (conducting the proceedings in English notwithstanding the registration agreement being in Chinese because (i) the Respondent via its website had demonstrated an ability to understand English, (ii) the disputed domain name was in English, and (iii) requiring the complainant to translate documents would result in substantial additional expense and delay). Given Respondent’s clear understanding of the English language, its selection of a Domain Name that incorporates English words, and its operation of a website that is in English, Respondent would face no prejudice in having the proceeding conducted in English.
4. Conversely, Complainant would face a substantial burden if the proceedings are conducted in Spanish, as it would have to incur significant translation costs.
5. Finally, to the extent that the Registrar needs to be apprised of the proceedings, Complainant notes that the Registrar too understands and conducts business in English (as well as Spanish). In fact, information on the Registrar’s website about registering a domain name is primarily in English, and registration costs appear in US dollars.
6. For these reasons, Complainant respectfully requests that the Panel exercise its authority under Rule 11(a) and determine that the language of the administrative proceeding be English. Should the Panel decide otherwise, however, Complainant respectfully requests that it be granted time to submit a translation of the Complaint into the language of the Panel’s choosing.
Factual Grounds
7. This Complaint is based on the following factual grounds.
A. Google and its GOOGLE and ADWORDS Marks
8. Google is a Delaware corporation located in Mountain View, California, with offices throughout the world.
9. The GOOGLE name and company were created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, the Google search engine has become one of the largest, most highly recognized, and widely used Internet search services in the world. Google’s primary website is located at www.google.com, and Google owns and operates websites at over 180 GOOGLE-formative domain names.
10. Google offers a wide range of Internet-related products and services, including Internet search and online advertising services, such as its AdWords service. Google has a range of other Internet-related products and services, including file storage and synchronization for cloud storage, file sharing and collaborative editing; a social networking platform; a groups platform for users sharing a common interest; blog publishing; instant translations between dozens of languages; photo sharing and managing; financial news; full text search in books and magazines stored in Google’s digital database; image and video searching; desktop and mobile web-mapping and geographical information; online shopping; an Internet browser; a service for creating and hosting applications and websites; email, document production, and storage tailored to businesses and other organizations; an online digital distribution platform that provides music, movies, books, apps, news, maps, Web mail with instant messaging, instant messaging and video chat platform, voicemail, and an online payment service.
11. The Google search engine indexes one of the world’s largest collections of searchable documents. The Google search engine provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools, and allows Internet users to search for and find a wide variety of content.
12. The GOOGLE mark has been found to be one of the top five Most Valuable Global Brands since 2001, with Forbes ranking Google’s mark as the world’s second most valuable brand in 2016, valued at $82.5 billion, and BrandZ ranking Google’s mark as the most valuable global technology brand in 2016.
13. Google’s website has been recognized as one of the most popular destinations on the Internet since well before the registration of the GooglePayMe.com domain name by Respondent on March 22, 2017. comScore, among others, ranked Google’s websites as among the most visited group of websites as early as 2004. According to comScore Media Metrix, Google.com is one of the most visited web properties in the world, with at least 190 million unique visitors per month in 2014. comScore also reports that Google is the world’s largest search engine, indexing pages from over 230 million domains and owning 62% of the market share in worldwide searches. In May 2011, Google surpassed 1 billion visitors globally over Google.com. It reaches over 200 million users worldwide.
14. Alexa, a web traffic ranking company, also lists Google as one of the top websites in the world for web traffic.
15. Google has consistently been honored for its technology and its services, and has received numerous industry awards.
16. The GOOGLE mark identifies Google’s award-winning, proprietary, and unique search services, search engine technology, advertising services, and associated products and services. The GOOGLE mark has been widely promoted among members of the general consuming public since 1997, and has exclusively identified Google. As a result, the GOOGLE mark and name symbolize the substantial goodwill associated with Google. Due to widespread and substantial international use, the GOOGLE mark and name have become famous. See Google Inc. v. Publica, FA1294447 (Forum Jan. 11, 2010) (noting “the fame and unique qualities of the GOOGLE Mark”).
17. In October 2000, Google formally launched its AdWords online advertising service. Google uses the marks GOOGLE ADWORDS, ADWORDS, and an Adwords logo in connection with that service. The service allows a user to create an account and then choose keywords that will trigger the display of the user’s advertising next to or above organic search results on Google search or other search sites, on websites and on mobile phone browsers. Google provides information regarding the AdWords service at its website, which is accessible through http://www.google.com/adwords/.
18. Google has continuously and extensively used the GOOGLE ADWORDS and ADWORDS marks for nearly 16 years prior to the registration of the GooglePayMe.com domain name by Respondent on March 22, 2017. The Google AdWords service is available in at least 190 countries. At least 1 million advertisers worldwide use the service and it has garnered significant press and media coverage. At present, a Google news search for “google adwords” retrieves about 208,000 articles. Through such long-standing, continuous and extensive use, the GOOGLE ADWORDS and ADWORDS marks have become famous and are properties of immense value to Google. In connection with the Adwords service, Google began using a close variation of its current Adwords logo in 2013, and the mark is used prominently in connection with the GOOGLE ADWORDS and ADWORDS marks.
19. In March 2009, Google founded Google Ventures, a venture capital business that provides funding for startup companies in a variety of industries. Beginning in 2009 and in connection with those services, Google used the GOOGLE VENTURES word mark – often in a stylized form, for over five years. Google further has used a logo in connection with its venture capital services for several years. This use significantly predates Respondent’s registration of the GooglePayMe.com domain name on March 22, 2017 and Respondent’s use of the GOOGLE VENTURES word marks and logo on its site. Although Google’s parent company, Alphabet, Inc., recently changed the brand associated with its venture capital services to GV, the GOOGLE VENTURES name continues to appear at the company’s website home page.
20. Google owns numerous trademark registrations for the GOOGLE mark throughout the world (many dating back to as early as 1998). Google’s registrations include a registration, issued September 12, 2006, for the design mark (“Google Logo”). The registration for the Google Logo shows Complainant’s distinctive blue-red-yellow-blue-green-red color sequence, which first was used at least as early as 1997, and which was carried over to the recently updated version of the logo. Each registration remains valid and in full force and effect.
21. Google further owns numerous trademark registrations for the ADWORDS mark throughout the world (many dating back to as early as 2002). Each registration remains valid and in full force and effect.
B. Respondent and the Domain Name
22. At the time of this Complaint, the true identity of the registrant of the Domain Name is privacy protected in the WHOIS record and listed only as Domain Name Privacy Protection.
23. As shown in the WHOIS records, Respondent registered the GooglePayMe.com domain name on March 22, 2017, well after Google acquired protectable rights in the GOOGLE mark and well after the mark became famous.
24. The Domain Name resolves to a website that purports to provide a program whereby participants can earn over $100 per day by posting links and advertisements online. The website promises users more than $10,000 per month of “automated income” for posting 10 links per day, with the maximum possible earnings being “unlimited.” The website explains that because online advertisement is crucial for business, companies that wish to advertise online “have plenty of money to share with those posting their ads.” To join this “exclusive program,” users need only submit an electronic form indicating a name, email address, and phone number. The GooglePayMe.com website and the form both direct users to a page on Paypal.com, an online payment platform, prompting them to pay $49.97 to join the program. The GooglePayMe.com website claims that this price is a 70% reduction from the usual $150.
25. Although the resolving website and the associated business are not owned by, affiliated with, or endorsed by Google, the website nevertheless makes prominent brand use of the GOOGLE, Google Logo and GOOGLE VENTURES marks, and emphasizes the brand significance of GOOGLE by use of the “TM” symbol.
26. The Google Ventures design mark appears several times on the GooglePayMe.com website, as if it is a logo for the program.
27. In addition to using the GOOGLE mark and color scheme, the GooglePayMe.com site prominently displays the ADWORDS logo with information about the program and how to join.
28. Further, the name of Respondent’s alleged program, “Google Pay Me,” states literally that Google pays participants of the program. Thus, before viewing the resolving web site, Internet users are confronted with the Domain Name GooglePayMe.com, which explicitly communicates – falsely – that Google will pay them. The false belief created in Internet users by the Domain Name then is reinforced by the resolving website, which prominently displays Google’s name and marks all in a brand-like manner. Moreover, the Respondent’s website discusses its program as though it were being offered directly by Google, e.g., through the use of phrases such as “our exclusive program.” Respondent’s prominent use of Google’s marks at the website and in the Domain Name strongly (but falsely) imply that “our” refers to Google. Users are likely to believe they have reached a page and service operated by, endorsed by, or otherwise affiliated with Google. Internet users are never apprised that Respondent or its offerings are unrelated to Google.
29. In addition to the Google marks and logos, the home page of GooglePayMe.com displays the logos of four well-known news and media organizations, implying that those organizations have somehow endorsed or reported on the program being offered. When a user scrolls over these images, they become darker as if to indicate that they are links to external sites or articles, but the images do not actually contain links. Upon information and belief, these organizations have not endorsed or otherwise reported on Respondent or its service. Presumably Respondent has incorporated these logos to falsely create an air of legitimacy to Respondent’s services and to further deceive Internet users into believing that they have reached a Google program.
30. Overall, the design of the website resolving from the Domain Name is calculated to mimic the look and feel of a Google owned website in an effort to give Internet users the impression that they have reached a website operated by or affiliated with Google.
Legal Grounds
This Complaint is based on the following legal grounds.
A. Likelihood of Confusion – Rule 3(b)(ix)(1); Policy ¶4(a)(i)
31. Google has used the GOOGLE mark and associated logos since well before March 22, 2017, the date that Respondent registered the GooglePayMe.com domain name. Indeed, Google owns registrations for the GOOGLE word mark and logos in jurisdictions around the world and many of these filings have priority dates that predate Respondent’s registration of the Domain Name by more than 15 years. These filings remain valid and in force. In light of these filings and Google’s substantial and exclusive use of the GOOGLE mark, Google owns protectable rights in the GOOGLE mark that predate the registration date of the Domain Name. Google, Inc. v. serap ozk, FA1562193 (Forum July 14, 2014) (finding prior rights established in the GOOGLE mark through complainant’s holding of numerous trademark registrations internationally); Google, Inc. v. DktBot.org, FA0286993 (Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
32. A domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”). Here, the Domain Name [GooglePayMe.com] incorporates the GOOGLE mark in its entirety.
33. In registering GooglePayMe.com, Respondent has merely added to Google’s famous mark the generic top-level domain “.com” and the non-distinctive terms “Pay Me.” “Pay Me” is descriptive of Respondent’s program, which purports to pay individuals for posting links and advertisements online. Thus, these non-distinctive additions fail to differentiate the Domain Name from Google’s famous GOOGLE mark. Panels have repeatedly held that the addition of descriptive or generic terms to a complainant’s mark in a domain name is insufficient to distinguish a domain name from a complainant’s mark. See Google Inc. v. Chris Gillespie, FA1434643 (Forum May 10, 2012) (finding <googlemoneyorders.com> and <googlemoneytransfers.com> confusingly similar to Google’s GOOGLE mark under Policy ¶4(a)(i) because “the domain names contain Complainant’s mark entirely in addition to . . . generic terms . . . and a gTLD”). Moreover, because Google’s highly distinctive and famous GOOGLE mark forms the dominant portion of the Domain Name, the Domain Name retains an overall commercial impression of being connected with Google. See Yoga Works, Inc. v. Jenna Arpita d/b/a/ Shanti Yoga Works, FA155461 (Forum June 17, 2003) (finding <shantiyogaworks.com> domain name confusingly similar to complainant’s YOGA WORKS mark because, despite the addition of “shanti”, the dominant feature of the domain name is complainant’s mark); see also Google, FA1434643 (finding “googleiapps.com” confusingly similar to the GOOGLE mark). Thus, users are likely to assume that the Domain Name is owned or authorized by Google.
34. Finally, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” in the Domain Name is of no help. Panels have consistently held that gTLDs are irrelevant within an analysis of confusing similarity. See, e.g., Google Inc. v. Jinsu Kim, FA1139127 (Forum March 11, 2008) (“[T]he addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s [Google’s] mark[] [ADWORDS] is considered irrelevant for the purposes of evaluating whether a domain name is confusingly similar to Complainant’s mark.”).
35. Accordingly, the Domain Name is confusingly similar to Complainant’s GOOGLE mark.
B. No Rights or Legitimate Interests – Rule 3(b)(ix)(2); Policy ¶4(a)(ii).
36. Given the extensive use, media coverage and fame of the GOOGLE mark, Google’s worldwide trademark filings, Respondent’s registration of a domain name that entirely incorporates the GOOGLE mark, Respondent’s brand-like use of the GOOGLE logo and color scheme, the ADWORDS logo, and the GOOGLE VENTURES word and logo marks on its website, and Respondent’s use of the Domain Name for services directly related to Google’s AdWords product and service, Respondent is undoubtedly familiar with, and attempting to trade off of, the goodwill established by Google in the GOOGLE mark. This is evidence that Respondent does not have rights or legitimate interests in the Domain Name. See Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000) (finding that respondent lacked rights and legitimate interests in the domain name because respondent was not authorized to use complainant’s TELSTRA marks, and because TELSTRA is an invented term, it is not a mark that another would legitimately choose unless seeking to create an impression of an association with complainant).
37. As Panels have noted in evaluating infringing GOOGLE-formative domain names, any “[r]espondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.” Google Inc. v. Mikel M Frieje, FA102609 (Forum Jan. 11, 2002).
38. Google has not authorized Respondent to register or use the Domain Name, nor is Respondent affiliated with, associated with, or otherwise endorsed by Google. Unlicensed, unauthorized use of a domain that incorporates a complainant’s trademark is strong evidence that Respondent has no rights or legitimate interests in the Domain Name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA076561 (Forum Oct. 26, 2007); Fair Isaac Corp. v. Michele, FA486147 (Forum Mar. 30, 2013) (“Respondent could not have developed any rights in the FICO [m]ark, unless Complainant licensed the FICO mark to Respondent or otherwise allowed Respondent to use it.”).
39. On information and belief, Respondent is not commonly known as the Domain Name or any name containing the GOOGLE mark. Respondent’s WHOIS information in connection with the Domain Name makes no mention of the Domain Name or the GOOGLE mark, other than in its email address, which merely uses the domain name (googlepayme.com@traxhost.com). A registrant may be found to lack any rights or legitimate interests in a domain name where there is no indication it is known by that name in the WHOIS record. See Popular Enterprises, LLC v. Sung-a Jang, FA0811921 (Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”); see also Google Inc. v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS, FA1519295 (Forum Oct. 29, 2013) (Some of the “best evidence to determine if a Respondent has rights or interests by being commonly known by the disputed domain name is the WHOIS record.”).
40. Although the website resolving from the Domain Name prominently displays GOOGLE and GOOGLE VENTURES in a brand-like manner, upon information and belief, Respondent was not known by GOOGLE or any name incorporating GOOGLE prior to registering the Domain Name on March 22, 2017, well after Complainant’s GOOGLE mark had established longstanding use and distinctiveness worldwide. Moreover, Google owns registrations for the GOOGLE mark in jurisdictions around the world, that date back to more than fifteen (15) years before the registration date of the Domain Name. Under similar circumstances, panels have determined that the respondent was not “commonly known” by the domain name, pursuant to Policy ¶4(c)(ii). See, e.g., Yoga Works, Inc. v. Arpita, FA0155461 (Forum June 17, 2003) (finding that respondent was not commonly known by the shantiyogaworks.com domain name, despite its Whois contact information listing the “Shanti Yoga Works” name and its website using that name and logo, where complainant’s mark had been registered in respondent’s country of domicile for over 7 years before the domain name was registered, and complainant had never licensed or authorized respondent to use complainant’s mark).
41. Respondent uses the Domain Name to resolve to a commercial website that promotes Respondent’s purported program that pays individuals for posting advertisements. By using the Domain Name in this manner, Respondent seeks to capitalize on the confusing similarity between the Domain Name and the GOOGLE mark to attract and divert Internet users seeking information from Complainant and seeking to engage in Complainant’s products and services. Respondent profits from Internet users who mistakenly are diverted to Respondent’s website under the false belief that they have reached a site operated or endorsed by Google. That false belief initially is created by Respondent’s use of Complainant’s GOOGLE word mark in the Domain name, and then reinforced by its brand-like use of the GOOGLE word and logo marks, the ADWORDS word and logo marks, the GOOGLE VENTURES word and logo marks, and the Google color scheme on the website – all in a calculated attempt to replicate the overall design and user experience of a legitimate Google website in order to further confuse Internet users seeking to engage with Google and its commercial offerings. Respondent’s activities leave the strong impression that Respondent’s services are endorsed by or affiliated with Complainant. Respondent’s use of the Domain Name to commercially benefit by luring Internet users to Respondent’s website does not constitute a bona fide offering of goods or services in connection with the Domain Name, under Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the Domain Name, under Policy ¶4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA0203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus was not using the name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Google Inc. v. Julian Majid a/k/a internetcloning.com, FA1325921 (Forum July 13, 2010) (respondent’s use of the <googleadwords.us> domain name to resolve to a website that features services that utilize Google’s AdWords program “does not constitute a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶4(c)(iv)”).
42. Thus, the record clearly demonstrates that Respondent lacks any rights or legitimate interests in the Domain Name.
C. Bad Faith – Rule 3(b)(ix)(3); Policy ¶4(a)(iii).
43. The evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Name opportunistically and in bad faith. Given the fame of the GOOGLE mark, the extensive media coverage of Complainant and its mark, and Google’s worldwide trademark filings, it is inconceivable that Respondent created the Domain Name independently. See Google Inc. v. Publica, FA1294447 (Forum Jan. 11, 2010) (“the fame and unique qualities of the GOOGLE mark make it extremely unlikely that the Registrant created the [d]omain [n]ame independently”); The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA112627 (Forum July 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”). The fact that Respondent (i) registered a Domain Name that incorporates the GOOGLE mark; (ii) makes brand-like use of the GOOGLE word and logo marks, the ADWORDS word and logo marks, the GOOGLE VENTURES word and logo marks, and the Google color scheme; and (iii) directly refers to the advertising services for which Complainant is well-known, is further evidence that Respondent had actual knowledge of the GOOGLE mark and registered the Domain Name in bad faith. See Google, Inc. v. Rusev, FA466022 (Forum June 3, 2005) (concluding that respondent registered the disputed domain with actual knowledge of complainant’s rights due to the connection between respondent’s website and complainant’s business, which was evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii)).
44. Respondent clearly is using the GOOGLE mark to attract Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the service promoted on that website. Respondent’s “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).” Printingforless.com v. Reno Printing for Less, FA1336600 (Forum Sept. 7, 2010); Victoria’s Secret Stores Brand Management, Inc. v. Lewis, FA1337417 (Forum Sept. 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)). Bad faith registration and use is evident from Respondent’s use of the Domain Name merely to attract consumers to its website and to promote Respondent’s own related business. See Google Inc. v. erc reklam, FA1675920 (Forum June 23, 2016) (respondent’s use of “domain names that incorporate complainant’s well-known trademark to promote a competing business, under circumstances strongly supporting an inference that respondent’s conduct is targeted directly at Complainant or its mark” evidenced bad faith registration and use); Zoetis Inc. v. VistaPrint Tech. Ltd., FA1646149 (Forum Dec. 8, 2015) (finding bad faith registration and use from “[r]espondent’s use of the domain name to advertise its own business” which constituted “an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.”).
45. Given Respondent’s registration of the Domain Name that wholly incorporates the famous GOOGLE mark and without a doubt is targeted to Internet users searching for or seeking to engage Google, it is impossible to conceive of any potential legitimate use of the Domain Name. As such, the Domain Name is being used in bad faith. See, e.g., Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003) (“Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that [r]espondent was unaware of [c]omplainant's trademark . . . . [r]espondent has provided no evidence or suggestion of a possible legitimate use . . . . Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the [r]espondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the [c]omplainant’s rights under trademark law.”).
46. Bad faith registration and use of the Domain Name is further evidenced by Respondent’s use of the Domain Name to offer illegitimate ad-related services, including the potential to earn “unlimited cash” by working for “5 minutes a day” while “on autopilot.” To gain access to this “fully automated income,” users are prompted to provide personal contact information and send a payment over the Internet. Respondent’s illegitimate use of the Domain Name in this manner to offer false promises of riches in exchange for obtaining payment from and the personal information of Internet users is evidence of Respondent’s bad faith use and registration. See NORDSTROM, Inc. and NIHC, Inc. v. PrivacyProtect.org / Domain Admin, FA1398811 (Forum Sep. 8, 2011) (finding bad faith where the respondent used the <nordtrom.com> domain name to attract Internet users and deceive them into divulging personal information in exchange for false promises of gift cards).
47. Additionally, Respondent’s use of the Domain Name with its Internet ad-related services is inherently disruptive to Complainant’s business “as it delays or impedes Complainant’s legitimate customers and potential customers from finding Complainant’s [legitimate] services and products.” See, e.g., Salesforce.com v. Mandi Sun / Sun Man di / sunmandi, FA1389992 (Forum June 27, 2011); Microsoft Corporation v. N/A / Bellamy Charles, FA1448349 (Forum Jul. 23, 2012) (finding registration and use in bad faith where respondent used the domain name in question “to offer the download of competing computer safety software,” thereby disrupting complainant’s business); Google Inc. v. AdSense Wala, FA1506186 (Forum July 26, 2013) (“The Panel holds that Respondent’s competing use of the <adsensewala.com> domain name evidences that Respondent has registered and is using the domain name in a bad faith scheme to disrupt Complainant’s business under Policy ¶4(b)(iii).”).
48. Where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, “Google” has no meaning other than as Complainant’s trademark. Thus, Respondent’s use of that term clearly indicates an attempt to trade off of Complainant’s goodwill in the famous GOOGLE mark.
49. Based on the foregoing, Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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: LANGUAGE
Complainant claims the proceeding should be conducted in English because Respondent is conversant and proficient in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings, taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
The registrar’s verification didn’t really answer the question of the language of the registration agreement. The Forum’s email to the registrar says it will assume the registration agreement is in English unless the registrar specifies otherwise. This registrar did not specify otherwise. Therefore, the Panel will assume the registration agreement was written in English.
This means the Panel need not consider Complainant’s request to conduct this proceeding in English.
Complainant registered its GOOGLE mark with the United States Patent and Trademark office (“USPTO”) (Reg. No. 3,140,793, registered Sep. 12, 2006). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country (in this case Argentina). T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Complainant has rights in the GOOGLE mark under Policy ¶4(a)(i).
Respondent’s <googlepayme.com> is identical or confusingly similar to Complainant’s GOOGLE mark because it merely appends the terms “pay” and “me” and the gTLD “.com”. Adding generic terms does not sufficiently distinguish the mark from the domain name. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶4(a)(i).) Respondent’s <googlepayme.com> is identical or confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its GOOGLE mark in any fashion. Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name, especially when a privacy service is shown as the registrant. 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). Respondent used a privacy service to register the disputed domain name. The WHOIS information of record lists “DOMAIN NAME PRIVACY PROTECTION” as the registrant. Respondent is not commonly known by <googlepayme.com> per Policy ¶4(c)(ii).
Complainant claims Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent is using the resolving webpage to pass itself off as Complainant, as an affiliate of Complainant, or as a website that is supported by Complainant. Respondent lures Internet users to offer sensitive personal and financial information using this quasi-apparent authority. Such use cannot be construed as bona fide offerings of goods or services or legitimate noncommercial or fair use of a domain name. 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).”). Complainant provided screenshots of Respondent’s website displaying Complainant’s GOOGLE word and logo marks, Complainant’s <google.com> color scheme and Complainant’s ADWORDS logo. Complainant provided a screenshot of the <googlepayme.com> webpage prompting Internet users to provide personal information. Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶4(c)(i) or (iii).
Respondent’s use of the disputed domain name to lure Internet users into providing personal information for non-legitimate purposes constitutes phishing. Phishing is “a practice that is intended to defraud consumers into revealing personal and proprietary information”. Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004). Websites used for phishing cannot be construed as a bona fide offering of goods or services or legitimate noncommercial fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Respondent’s attempts to lure Internet users into providing personal information based upon a false association to Complainant’s business constitutes phishing. Respondent’s phishing is not a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶4(c)(i) or (iii).
Respondent has not acquired any rights to the disputed domain name by simply registering it because it was registered with a privacy service. Therefore, Respondent has done nothing to publicly associate itself with the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is disrupting its business by diverting potential customers away from Complainant by passing itself off as Complainant. Respondent’s website displays Complainant’s logos and describes services related to Complainant’s business. Registration and use of a domain name to display a website using a complainant’s “look and feel” is bad faith under Policy ¶4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶4(b)(iii)). Complainant has provided screenshot evidence of Respondent’s resolving webpage displaying content nearly identical to Complainant’s <google.com> and <google.com/adwords/> websites. Respondent has acted in bad faith under Policy ¶4(b)(iii).
Respondent has registered and is using the <googlepayme.com> domain name in bad faith under Policy ¶4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the GOOGLE mark goodwill. Using a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content constitutes bad faith under Policy ¶4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant has provided screenshot evidence of <googlepayme.com> displaying Complainant’s GOOGLE and GOOGLE VENTURES marks, the symbol and services associated with Complainant’s ADWORDS mark and fraudulent endorsements by other well-known brands. Respondent intentionally created confusion, meaning Respondent registered and used the domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims it is inconceivable Respondent could have registered the disputed domain name without actual prior knowledge of Complainant’s rights in the mark in light of the fame and notoriety of Complainant’s GOOGLE mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name 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). A respondent generally has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶4(a)(iii).”). In this case, Respondent seems to be trying to pass itself off as Complainant, which strongly suggests Respondent knew about Complainant’s mark. The Panel is forced to find Respondent had actual knowledge of Complainant’s rights when <googlepayme.com> was registered and subsequently used. This constitutes bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent is using the disputed domain name in connection with a phishing scheme. Under the Policy, phishing is considered bad faith. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶4(a)(iii)). Respondent lures Internet users into divulging personal and payment information by creating a false association with Complainant’s brand and promising users they will receive compensation by disclosing their personal information. Respondent has engaged in phishing and therefore has acted in bad faith under Policy ¶4(a)(iii).
Respondent registered the disputed domain name using a privacy service. This raises the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <googlepayme.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, June 29, 2017
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