Google Inc. v. 1&1 Internet Limited
Claim Number: FA1708001742725
Complainant is Google Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is 1&1 Internet Limited (“Respondent”), represented by Angela Brüning of KOBALT AARPI, France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <web-account-google.com>, registered with 1&1 Internet SE.
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 Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2017; the Forum received payment on August 1, 2017. The Complaint was received in both English and French.
On August 3, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <web-account-google.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 August 9, 2017, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of August 29, 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@web-account-google.com. Also on August 9, 2017, the French language 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 August 30, 201, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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 an online search engine that has become one of the most highly recognized and widely used Internet search services in the world. Complainant registered the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004). See Compl., at Attached Ex. 8. Respondent’s <web-account-google.com> domain name is identical or confusingly similar to Complainant’s mark as it fully incorporates the GOOGLE mark and merely adds the generic terms “web” and “account.”
Respondent has no rights or legitimate interests in the <web-account-google.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent operates a website that purports to direct users to their GOOGLE Account, in an effort to attract Internet traffic to Respondent’s website and surreptitiously obtain their private account information. See Compl., at Attached Ex. 10 & 11 (screenshot of resolving webpage, along with screenshot indicating malware on the resolving webpage). Further, Respondent, by prominently featuring the GOOGLE mark and GOOGLE stylized mark on the resolving webpage, attempts to pass off as Complainant to further consumer confusion. See Compl., at Attached Ex. 10.
Respondent registered and uses the <web-account-google.com> domain name in bad faith. Respondent has used the disputed domain name in order to create initial confusion for Internet users that the domain name is affiliated with Complainant, which helps bring people into Respondent’s phishing scam and drive up Internet traffic and drive up conversion rates. See Compl., at Attached Ex. 10 & 11. Further, in the event Respondent offers legitimate services, the services offered directly compete with those of Complainant. Compare Compl., at Attached Ex. 9 with Compl., at Attached Ex. 10. Additionally, Respondent opportunistically registered the disputed domain name. Finally, Respondent must have registered the disputed domain name with notice of Complainant’s mark because of the fame and unique qualities of the GOOGLE mark and the extreme unlikelihood that Respondent created the disputed domain name independent of such knowledge.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in French, thereby making the language of the proceedings in French.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1.Complainant is a prominent United States company that operates an online search engine that has become one of the most highly recognized and widely used Internet search services in the world.
2. Complainant has established its registered trademark rights in the GOOGLE mark by registering it with the USPTO (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004).
3. Respondent registered the <web-account-google.com> domain name on July 18, 2017.
4. Respondent has used the domain name to resolve to a website that purports to direct users to their GOOGLE Account, in an effort to attract Internet traffic to the Respondent’s website and surreptitiously obtain their private account information.
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 submits that it registered the GOOGLE mark with the USPTO (e.g. Reg. No. 2,806,075, registered Jan. 20, 2004). See Compl., at Attached Ex. 8. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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).”). Accordingly, 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 Respondent’s <web-account-google.com> domain name is identical or confusingly similar to Complainant’s mark as it fully incorporates the GOOGLE mark and merely adds the generic terms “web” and “account.” Similar changes in a registered mark have failed to distinguish a domain name sufficiently from a trademark for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).The Panel also notes that the disputed domain name contains hyphens and the generic top-level domain (“gTLD”) “.com,” both of which fail to distinguish a domain name from a registered mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also 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). The Panel therefore finds that the <web-account-google.com> domain name is confusingly similar to the GOOGLE mark under Policy ¶4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain 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 trademark and to use it in its domain name, adding the generic terms “web” and “account” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered theweb-account-google.com> domain name on July 18, 2017;
(c) Respondent has used the domain name to resolve to a website that purports to direct users to their GOOGLE Account, in an effort to attract Internet traffic to the Respondent’s website and surreptitiously obtain their private account information;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <web-account-google.com> domain name. Where a response is lacking, relevant information on this issue includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Sylvain Petiot” as the registrant. See Compl., at Attached Ex. 4. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the GOOGLE mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <web-account-google.com> domain name under Policy ¶ 4(c)(ii);
(f)Complainant argues that Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent engages in a phishing scheme to obtain information from users. Phishing schemes can evince a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant submits that the login screen on the resolving webpage is fraudulent, and Respondent uses the login screen to obtain users’ personal information surreptitiously. See Compl., at Attached Ex. 10. Complainant’s exhibit 11 displays a malware message displayed on the webpage, which Complainant claims indicates fraudulent conduct. The Panel therefore finds that Respondent phishes for users’ personal information, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii);
(g) Complainant next argues that Respondent attempts to pass itself off as Complainant. Passing off can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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).”). Respondent’s resolving webpage displays the GOOGLE mark and GOOGLE stylized mark, which, Complainant claims, causes furthers consumer confusion. Compare Compl., at Attached Ex. 9 with Compl., at Attached Ex. 10. Accordingly, the Panel finds that Respondent attempts to pass itself off as Complainant, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
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 uses the <web-account-google.com> domain name in bad faith by intercepting users seeking Complainant’s services and commercially benefits by offering competing services. Using a confusingly similar domain name to offer services in direct competition with a complainant can evince bad faith under Policy ¶ 4(b)(iv). 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.”). Complainant claims that in the event Respondent offers legitimate services through the resolving webpage, that the services it would provide directly compete with Complainant. Compare Compl., at Attached Ex. 9 with Compl., at Attached Ex. 10. The Panel finds that Respondent attempted to benefit commercially from Complainant’s mark in bad faith for the purposes of Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent engages in a phishing scheme to obtain personal information for users. Using a confusingly similar domain name to phish for information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See 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 claims that the login information contained on the resolving webpage does not actually function, but rather Respondent uses it to obtain personal information from users. See Compl., at Attached Ex. 10 & 11. Accordingly, the Panel concludes that Complainant has sufficiently shown Respondent’s phishing attempts, constituting bad faith within the meaning of Policy ¶ 4(a)(iii).
Thirdly, Complainant claims that Respondent had actual or constructive knowledge of Complainant’s GOOGLE mark when registering the <web-account-google.com> domain name. Arguments of bad faith based on constructive notice are usually unsuccessful as UDRP decisions generally 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). Complainant contends that Respondent must have had actual knowledge of the mark because of the fame and unique qualities of the GOOGLE mark and the extreme unlikelihood that Respondent created the disputed domain name independent of such knowledge. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
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 disputed 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 <web-account-google.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC,
Panelist
Dated: August 31, 2017
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