Google LLC v. shuhai yang
Claim Number: FA1802001770473
Complainant is Google LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, District of Columbia, USA. Respondent is shuhai yang (“Respondent”), Beijing, China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlev1.com>, <googlev2.com>, <googlev3.com>, <googlev4.com>, and <googlev5.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2018; the Forum received payment on February 5, 2018.
On February 6, 2018, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <googlev1.com>, <googlev2.com>, <googlev3.com>, <googlev4.com>, and <googlev5.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 February 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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@googlev1.com, postmaster@googlev2.com, postmaster@googlev3.com, postmaster@googlev4.com, postmaster@googlev5.com. Also on February 12, 2018, 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 March 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Google LLC, uses its GOOGLE mark in conjunction with search services, search engine technology and associated products and services. Complainant has rights in the GOOGLE mark based upon registrations with various governmental trademark agencies. Respondent’s <googlev1.com>, <googlev2.com>, <googlev3.com>, <googlev4.com>, and <googlev5.com> domain names are confusingly similar to Complainant’s GOOGLE mark as the mark is incorporated in its entirely before Respondent appends the letter “v,” a number 1-5, and a “.com” generic top-level-domain (“gTLD”) to each.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names based on the WHOIS information and lack of authorization from Complainant to use the GOOGLE marks. Respondent does not use the at issue domain names in connection with a bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to redirect Internet users seeking Complainant to Respondent’s own resolving websites that have no affiliation with Complainant. Further, Respondent has made no attempt to develop websites at the domain names.
Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to bait consumers into visiting Respondent’s websites, which present material unrelated to Complainant’s goods and services, for Respondent’s commercial gain. Furthermore, Respondent’s disputed domain names at issue deliver malware. Respondent opportunistically registered the disputed domain names. Respondent inactively holds the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <googlev1.com>, <googlev2.com>, <googlev3.com>, <googlev4.com>, and <googlev5.com> domain names.
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 asserts rights in the GOOGLE mark based upon registration with various governmental trademark agencies around the world. Registration with numerous trademark agencies around the world is usually sufficient to demonstrate rights to a mark pursuant to Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Complainant provides copies of its active trademark registrations for the GOOGLE trademark. The Panel finds Complainant has demonstrated rights in the GOOGLE mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <googlev1.com>, <googlev2.com>, <googlev3.com>, <googlev4.com>, and <googlev5.com> domain names are confusingly similar to its GOOGLE mark as the mark is incorporated in its entirety before Respondent appends the letter “v,” a number 1-5, and a “.com” gTLD to each. Incorporation of an entire mark before adding a letter and a series of numbers is insufficient to distinguish domain names from a mark. See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum Jul. 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”); see also Novartis AG v. boggs, william, FA 1570988 (Forum Aug. 25, 2014) (finding that the <freshlook2.com> domain name was confusingly similar to the complainant’s FRESHLOOK mark because the domain name contained the mark in its entirety and merely added the number “2”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them. The Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’ s mark.
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent is not commonly known by the disputed domain names. WHOIS information, or a lack of authorization or license to use a complainant’s mark, can demonstrate a respondent is not commonly known by a domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum Jul. 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information for the <googlev1.com>, <googlev2.com>, <googlev3.com>, <googlev4.com>, and <googlev5.com> domain names lists “Shuhai Yang / beijing” as the registrant for each disputed domain name. Further, Complainant indicates Respondent lacks authorization and license to use its GOOGLE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant asserts Respondent does not use the <googlev1.com> and <googlev2.com> domain names in connection with a bona fide offering of goods or services, or legitimate noncommercial or fair use, as instead Respondent uses the disputed domain names to redirect Internet users otherwise seeking Complainant to Respondent’s own resolving websites that have no affiliation with Complainant. Redirecting internet users seeking a complainant to websites with no affiliation to a complainant can be indicative of a lack of rights under Policy ¶¶ 4(c)(i) and (iii). See Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”). Complainant provides screenshot evidence of the resolving website for the <googlev1.com> and <googlev2.com> domain names, which contains content unrelated to Complainant. The Panel finds Respondent failed to use the <googlev1.com> and <googlev2.com> domain names in connection with a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).
Complainant asserts Respondent fails to use the <googlev3.com>, <googlev4.com>, and <googlev5.com> domain names in connection with a bona fide offering of goods or services, or legitimate noncommercial or fair use and Respondent fails to make demonstrable preparations to use the disputed domain names. Failure to make demonstrable preparations to use a disputed domain name can evince a finding that a respondent failed to use said domain name in connection with a bona fide offering of goods or services, or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Complainant provides screenshot evidence of the failure of the <googlev3.com>, <googlev4.com>, and <googlev5.com> domain names to resolve to active websites.
The Panel finds Respondent failed to use the disputed domain names in connection with a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial fair use per Policy ¶ 4(c)(iii) and lacks rights or legitimate interests in the disputed domain names.
Complainant has proved this element.
Complainant asserts Respondent registered and uses the <googlev3.com> domain name in bad faith as Respondent distributes malware from the resolving website. Intentionally attracting internet users to a disputed domain name that distributes malware indicates bad faith pursuant to Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum Jul. 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).”). Complainant provides screenshot evidence which Complainant alleges demonstrates Respondent’s use of the <googlev3.com> domain name to distribute malware. The Panel finds Respondent registered and uses the <googlev3.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant asserts that, given Respondent’s registration of the Domain Names that fully incorporate the GOOGLE mark, it is impossible to conceive of any potential legitimate use of the disputed domain names. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Here, the “Respondent has appropriated a trademark having a strong reputation and widely known.” Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003). “[I]t is not possible to conceive of any plausible actual or contemplated active use of the Domain Name[s] by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Id. 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. Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used… in its Domain Name[s] for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith.” Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006). The Panel agrees there is no potential legitimate use of the disputed domain names. From the uncontested allegations and evidence the Panel finds Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <googlev1.com>, <googlev2.com>, <googlev3.com>, <googlev4.com>, and <googlev5.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: March 20, 2018
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