Google LLC v. James Bilson / James Koswell
Claim Number: FA1803001778652
Complainant is Google LLC (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, California, USA. Respondent is James Bilson / James Koswell (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <google--flights.com> and <googleflightsx.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2018; the Forum received payment on March 23, 2018.
On March 28, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <google--flights.com> and <googleflightsx.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 April 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@google--flights.com, postmaster@googleflightsx.com. Also on April 4, 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 April 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Google LLC, is one of the most highly recognized internet search services in the world. Complainant owns numerous registrations for its GOOGLE mark throughout the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,954,783, registered May 24, 2005). See Compl. Annex 14. Complainant claims common law rights to its GOOGLE FLIGHTS mark. Respondent’s domain names are confusingly similar to Complainant’s marks for the following reasons:
· The <google--flights.com> domain name adds the GOOGLE and GOOGLE FLIGHTS marks entirely, adds two hyphens, adds the descriptive term “flights,” and adds the “.com” gTLD to the GOOGLE mark.
· The <googleflightsx.com> domain name adds the GOOGLE and GOOGLE FLIGHTS mark entirely, adds the letter “x,” omits a space from GOOGLE FLIGHTS, and adds the descriptive term “flights,” in addition to the “.com” gTLD, to the GOOGLE mark.
Respondent has no rights or legitimate interests in the disputed domain names. Further, Respondent is not commonly known by the domain name at issue based on the WHOIS information of record, and because Complainant has never granted authorization to Respondent for the use of its mark. Respondent does not use the domain names at issue in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent’s disputed domain names resolve and divert internet users to a website that is monetized by sponsored advertisements. See Compl. Annex 15. Further, Respondent’s disclaimer at the bottom of the disputed domain names’ resolving webpage does not give rise to rights or legitimate interests because the domain names are used for commercial activity. Id.
Respondent registered and used the at issue domain names in bad faith as Respondent uses them for commercial gain and to pass off as Complainant. Further, Respondent had actual knowledge of Complainant’s rights to its mark prior to registering the domain names at issue.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In the instant proceedings, there are two domain names in dispute. Complainant has submitted that the entities which control the domain names are effectively controlled by the same person and/or entity, which is operating under several aliases and that the proceeding therefore comes within the meaning of Paragraph 3(c) of the Rules. In support of its submission, Complainant contends that the two domain names have the same IP address (159.203.189.154), IP location (New Jersey – North Bergen – Digitalocean Llc), ASN name (AS14061 DIGITALOCEAN-ASN – 4 DigitalOcean, LLC, US) and similar name servers (ns17.domaincontrol.com / ns18.domaincontrol.com and ns31.domaincontrol.com / ns32.domaincontrol.com). See Annex 4. Complainant further indicates that the domain names resolve to highly similar webpages that contain similar tabs for “Search,” “Booking,” “Explorer,” “API,” “App” and “Matrix” (compare Annex 15 with Annex 16) and were registered within days of each other through the same registrar (GoDaddy). Further, the Domain Names themselves are highly similar. Each incorporates Complainant’s GOOGLE and GOOGLE FLIGHTS marks, along with a generic top level domain (“gTLD”).
Having regard to the evidence and the above principles, the Panel finds the two domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and that the proceeding comes within the meaning of Paragraph 3(c) of the Rules and may proceed in the usual manner.
1. Complainant, Google LLC, is a United States company that is one of the most highly recognized internet search services in the world.
2. Complainant owns numerous registrations for its GOOGLE mark throughout the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,954,783, registered May 24, 2005).
3. Complainant has also established common law trademark rights in GOOGLE FLIGHTS from September 2011.
4. Respondent registered the <google--flights.com> domain name on December 10, 2017, and the <googleflightsx.com> domain name on December 14, 2017.
5. Respondent has caused the disputed domain names to resolve and divert internet users to a website that is monetized by sponsored advertisements.
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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights to its GOOGLE mark through numerous worldwide registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,954,783, registered May 24, 2005). See Compl. Annex 14. Registration of a mark worldwide is sufficient to demonstrate rights to said mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds Complainant has rights to its GOOGLE mark per Policy ¶ 4(a)(i).
Complainant also submits that it has common law trademark rights to its GOOGLE FLIGHTS mark. Common law rights to a mark may be demonstrated through evidence of secondary meaning. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Here, Complainant specifies that the following evinces secondary meaning in its GOOGLE FLIGHTS mark:
· Complainant has continuously and widely used the GOOGLE FLIGHTS mark since the launch of the service in September 2011.
· Unsolicited media articles have associated the GOOGLE FLIGHTS mark with the Google brand. See Compl. Annex 12.
· Recent studies show that Complainant’s service is likely to be used by at least one in ten frequent flyers on average in North America to begin an airfare search and more than twice as likely to be used by travelers aged between 18 and 32. See Compl. Annex. 13.
As a result, the Panel finds that Complainant has provided sufficient evidence of secondary meaning to establish common law rights to its GOOGLE FLIGHTS mark per Policy ¶ 4(a)(i) from September 2011.
The second issue that arises is whether the disputed domain names are identical or confusingly similar to either or both of Complainant’s GOOGLE or GOOGLE FLIGHTS mark.
The Panel finds that each of the domain names is confusingly similar to both trademarks.
Complainant argues that Respondent’s <google--flights.com> and <googleflightsx.com> domain names are confusingly similar to its respective marks for the following reasons:
· The <google--flights.com> domain name adds the GOOGLE and GOOGLE FLIGHTS marks entirely, adds two hyphens, and adds the descriptive term “flights” and the “.com” gTLD to the GOOGLE mark.
· The <googleflightsx.com> domain name adds the GOOGLE and GOOGLE FLIGHTS mark entirely, adds the letter “x,” omits a space from GOOGLE FLIGHTS, adds the “.com” gTLD, and adds the descriptive term “flights” to the GOOGLE mark.
· The term “flights” is descriptive of Complainant’s Google Flights service.
Such additions to disputed domain names are not typically sufficient to distinguish said domain names from a complainant’s mark(s) under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”). Consequently, the Panel finds Respondent’s additions to the disputed domain names are not sufficient to distinguish the domain names from Complainant’s marks per 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 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”).
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 and GOOGLE FLIGHTS marks and to use them in its domain names, making only minor alterations;
(b) Respondent registered the <google--flights.com> domain name on December 10, 2017, and the <googleflightsx.com> domain name on December 14, 2017 ;
(c) Respondent has caused the disputed domain names to resolve and divert internet users to a website that is monetized by sponsored advertisements;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues Respondent has no rights or legitimate interests in the <google--flights.com> and <googleflightsx.com> domain names because Respondent is not commonly known by the disputed domain names. Panels have found a respondent is not commonly known by a domain name where the respondent lacks authorization from a complainant to use its mark, or based on the WHOIS information of record. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, Complainant submits it has never granted Respondent authorization to use its marks, and the WHOIS information of record does not show Respondent is commonly known by the marks. The Panel notes the WHOIS information of record lists registrant as “James Bilson” and “James Koswell” for the <google--flights.com> and <googleflightsx.com> domain names respectively. Accordingly, the Panel finds Respondent is not commonly known by the domain names at issue;
(f) Complainant contends Respondent is not using the <google--flights.com> or <googleflightsx.com> domain names in connection with a bona fide offering of goods or services, or legitimate noncommercial or fair use. Instead, Complainant maintains, Respondent is using the disputed domain names to divert internet users to websites that are monetized by sponsored advertising. See Compl. Annex 15. Further, Complainant specifies, Respondent’s addition of a disclaimer (located at the bottom of the webpage) is insufficient to demonstrate rights or legitimate interests as the domains are also being used for commercial activity. Id. Past Panels have found such uses of domain names are not in accordance with Policy ¶¶ 4(c)(i) and (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name). Consequently, the Panel finds Respondent’s usage of the domain names at issue is not in accordance with Policy ¶¶ 4(c)(i) and (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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and used the <google--flights.com>, <googleflightsx.com> domain names in bad faith by using the domain names for commercial gain and to pass off as Complainant. Use of a disputed domain name to confuse and attract Internet users intentionally for a respondent’s commercial gain via passing off behavior does not evince good faith pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant specifies, Respondent uses the disputed domain names for commercial gain by listing sponsored advertisements on the resolving websites from which Respondent presumably profits. See Compl. Annex 15, 16. Further, Respondent attempts to pass itself off as Complainant through the prominent use of Complainant’s marks, and copying of Complainant’s material from its website, on the disputed domain names’ resolving websites. Id. Accordingly, the Panel finds Respondent’s uses of the domain names at issue to pass itself off as Complainant and gain commercially are in bad faith.
Secondly, Complainant submits Respondent had actual knowledge of Complainant’s rights to its marks prior to registering the <google--flights.com> and <googleflightsx.com> domain names. Constructive knowledge is insufficient to support a finding of bad faith; however, the Panel may find actual knowledge is sufficient to support a finding of bad faith based on a respondent’s use of the domain names. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant avers, given the extensive coverage and fame of Complainant’s marks, and the disputed domain names’ resolving websites that refer to Complainant’s services, it is inconceivable that Respondent registered the domain names without actual knowledge of Complainant’s rights. Consequently, the Panel finds Respondent had actual knowledge of Complainant’s rights prior to registering the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Thirdly, 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 names using the GOOGLE and GOOGLE FLIGHTS marks and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <google--flights.com> and <googleflightsx.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 30, 2018
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