Google LLC v. Ke Zhu
Claim Number: FA1712001764047
Complainant is Google LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, District of Columbia, USA. Respondent is Ke Zhu (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <guge2.com>, <i2guge.com>, and <2guge.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2017; the Forum received payment on December 21, 2017.
On December 22, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <guge2.com>, <i2guge.com>, and <2guge.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2018 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@guge2.com, postmaster@i2guge.com, postmaster@2guge.com. Also on December 29, 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 January 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a world-renowned technology company that provides internet search engines and computer-related products and services. Complainant unveiled its Chinese name, 谷歌, in 2006, which has a Pinyin translation of “Gu Ge.” Complainant uses the GU GE mark in conjunction with its business practices in China. Complainant’s 谷歌 and GU GE mark are registered with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., 谷歌- Reg. No. 5122683, registered Jan. 16, 2006; GU GE mark- Reg. No. 6901388, registered Aug. 15, 2008).
2. Respondent’s <guge2.com>, <i2guge.com>, and <2guge.com>[1] are confusingly similar to Complainant’s GU GE mark because they incorporate the mark in its entirety, removing spaces, adding the number “2” and the “.com” generic top level domain (“gTLD”); the <i2guge.com> domain also incorporates the letter “i.”
3. Respondent does not have rights or legitimate interests in <guge2.com>, <i2guge.com>, and <2guge.com>. Respondent is not commonly known by the domain names. Complainant has not authorized or licensed Respondent to use the GU GE mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <guge2.com> resolves to a website attempting to pass itself off as Complainant, whereas <i2guge.com> and <2guge.com> resolve to parked webpages with no active content or demonstrable intent for use.
4. Respondent registered and is using <guge2.com>, <i2guge.com>, and <2guge.com> in bad faith. Respondent’s registration of multiple infringing domain names shows a pattern of bad faith registrations.
5. Respondent’s <guge2.com> attempts to pass itself off as Complainant, diverting internet users to services in direct competition with Complainant, presumably for Respondent’s commercial gain.
6. Respondent had actual knowledge of Complainant and its rights to the GU GE mark when it registered <guge2.com>, <i2guge.com>, and <2guge.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GU GE mark. Respondent’s domain names are confusingly similar to Complainant’s GU GE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <guge2.com>, <i2guge.com>, and <2guge.com> domain names and that Respondent registered and uses the domain names 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 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.”).
Complainant is a world-renowned technology company that provides internet search engines and computer-related products and services. Complainant unveiled its Chinese name, 谷歌, in 2006, which has a Pinyin translation of “Gu Ge.” Complainant uses the GU GE mark in conjunction with its business practices in China. Complainant registered 谷歌 and the GU GE mark with SAIC (e.g., 谷歌- Reg. No. 5122683, registered Jan. 16, 2006; GU GE mark- Reg. No. 6901388, registered Aug. 15, 2008). Registrations with government trademark entities are sufficient to show rights in a mark. See Citigroup Inc. v. 刘军, FA 1716803 (Forum Mar. 27, 2017) (“Registration with the SAIC (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i).”). Therefore, the Panel determines that Complainant’s registrations with SAIC sufficiently show rights in 谷歌 and the GU GE mark.
Complainant asserts that Respondent’s <guge2.com>, <i2guge.com>, and <2guge.com> domain names are confusingly similar to Complainant’s GU GE mark because they incorporate the mark in its entirety, removing spaces, adding the number “2” and the “.com” gTLD; the <i2guge.com> domain also incorporates the letter “i.” The removal of spaces, along with the addition of numbers or letters, and a gTLD to a fully incorporated mark does not adequately distinguish a domain name from a mark in which a complainant has rights. See Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel concludes that Respondent’s <guge2.com>, <i2guge.com>, and <2guge.com> domain names are confusingly similar to Complainant’s GU GE mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <guge2.com>, <i2guge.com>, and <2guge.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent does not have rights or legitimate interests in <guge2.com>, <i2guge.com>, and <2guge.com>. In support of its contention, Complainant has shown that Respondent is not commonly known by the domain names. WHOIS information associated with this case identifies Respondent as “Ke Zhu.” A respondent is not commonly known by a domain name when there is no evidence in the record, including the WHOIS information, suggesting the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [names],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain names] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant has provided evidence that it has not authorized or licensed Respondent to use the GU GE mark in any regard, nor is Respondent affiliated with Complainant. Complainant asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. To support its assertion, Complainant has shown that Respondent’s <guge2.com> resolves to a website attempting to pass itself off as Complainant, whereas <i2guge.com> and <2guge.com> resolve to parked webpages with no active content or demonstrable intent for use. Utilizing a domain name to pass itself off as a complainant to offer competing goods and services, shows that a respondent does not have rights or legitimate interests in the domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Accordingly, the Panel concludes that Respondent does not have rights or legitimate interests in <guge2.com>, <i2guge.com>, and <2guge.com> pursuant to Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant maintains that Respondent registered and is using <guge2.com>, <i2guge.com>, and <2guge.com> in bad faith. Complainant asserts that Respondent’s registration of multiple infringing domain names shows a pattern of bad faith registrations. The Panel agrees that the registration of multiple infringing domain names is substantial evidence to show a pattern of bad faith registration. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)).
Complainant further contends that Respondent had actual knowledge of Complainant and its rights to the GU GE mark when it registered <guge2.com>, <i2guge.com>, and <2guge.com>. Panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). In light of the fame, notoriety, and long-standing use of Complainant's GU GE mark, it is inconceivable that Respondent could have registered the domain names without actual knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 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).”). Therefore, the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered <guge2.com>, <i2guge.com>, and <2guge.com>.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <guge2.com>, <i2guge.com>, and <2guge.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 24, 2018
[1]Respondent registered <guge2.com> and <i2guge.com> on August 27, 2016, and <2guge.com> on August 29, 2016.
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