Google LLC v. Bhawana Chandel / Admission Virus
Claim Number: FA1808001799694
Complainant is Google LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is Bhawana Chandel / Admission Virus (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmailtechinfo.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2018; the Forum received payment on August 1, 2018.
On August 3, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <gmailtechinfo.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@gmailtechinfo.com. Also on August 9, 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 August 31, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Google LLC., is a Delaware limited liability corporation located in Mountain View, California and is a leading provider of email services. Complainant has rights in the GMAIL mark based upon its registration of the mark with trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,150,462, registered Oct. 3, 2006) See Amend. Compl. Ex. 7. Respondent’s <gmailtechinfo.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire GMAIL mark in the domain name plus the generic terms “tech” and “info.”
ii) Respondent lacks rights and legitimate interests in the <gmailtechinfo.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant and divert users to a website which provides customer support phone numbers as part of a phishing scheme.
iii) Respondent registered and uses the <gmailtechinfo.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s website which features Complainant’s GMAIL mark in connection with a competing technical support service. Additionally, Respondent’s disputed domain name’s website contains customer service phone numbers that Respondent uses in connection with a phishing scheme. Further, Respondent had actual knowledge of Complainant’s rights in the GMAIL mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a response.
1.The disputed domain name <gmailtechinfo.com> was registered on August 31, 2015.
2. Complainant has established its rights in the mark GMAIL on the basis of its registered trademarks in numerous countries, including one with the USPTO (e.g., Reg. No. 3,150,462, registered Oct. 3, 2006).
3. Respondent’s webpage features Complainant’s mark and offers technical services for Complainant’s Gmail email service.
4. The disputed domain name’s resolving webpage features Complainant’s mark in connection with phone numbers users are encouraged to call for tech support related to Complainant’s service.
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 has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world. Registration with the multiple trademark agencies is sufficient to establish complainant’s rights in a mark under 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.”). Here, Complainant provides a chart of its registered trademarks in numerous countries, including one with the USPTO (e.g., Reg. No. 3,150,462, registered Oct. 3, 2006). See Amend. Compl. Ex. 7. Therefore, the Panel finds that the Complainant has rights in the GMAIL mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <gmailtechinfo.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the GMAIL mark in its entirety plus generic terms in the domain name. The addition of a generic/descriptive term is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). While Complainant does not specifically argue this, additions of a generic top-level domain (“gTLD”) to a complainant’s mark is irrelevant under a Policy ¶ 4(a)(i) analysis. See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark). Here, Respondent includes Complainant’s mark in its entirety plus the generic terms “tech” and “info” and a “.com” gTLD. Consequently, the Panel finds that Respondent’s <gmailtechinfo.com> domain name is confusingly similar to Complainant’s GMAIL mark under Policy ¶ 4(a)(i).
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), 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 argues that Respondent lacks rights and legitimate interests in the <gmailtechinfo.com> domain name. Specifically, Complainant claims Respondent is not authorized or permitted to use Complainant’s GMAIL mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (“Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way. See Amend. Compl. Ex. 4. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to use the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant asserts that Respondent uses the disputed domain name to pass off as Complainant in order to offer competing services. Use of a disputed domain name to pass off as a complainant to sell competing goods or services does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, Complainant provides a screenshot of Respondent’s webpage featuring Complainant’s mark. See Amend. Compl. Ex. 8. Complainant argues Respondent attempts attract users to the disputed domain name where it purports to offer technical services for Complainant’s Gmail email service. Id. Therefore, the Panel agrees with Complainant and finds Respondent is not making a a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Moreover, Complainant argues Respondent operates a phishing scheme using the phone numbers featured on the website. Use of a disputed domain name in connection with a phishing scheme is not considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 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). Here, Complainant provides screenshots of the disputed domain name’s resolving webpage, which features Complainant’s mark in connection with phone numbers users are encouraged to call for tech support related to Complainant’s service. See Amend. Compl. Ex. 8. Complainant asserts that Respondent operates a phishing scheme by collecting personal information from users who call the featured phone numbers. Id. Therefore, the Panel concludes that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 claims Respondent registered and uses the <gmailtechinfo.com> domain name in bad faith because Respondent uses the disputed domain name to attract users for commercial gain. Complainant argues Respondent does this by offering services that compete with Complainant’s business. Use of a domain name to provide competing goods or services may be evidence of bad faith under Policy ¶¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Here, Complainant provides screenshots of the disputed domain name’s resolving website which features Complainant’s mark in connection with customer support services for Complainant’s email service. See Amend. Compl. Ex. 8. Complainant claims the phone numbers located at the disputed domain name’s webpage compete with its own tech support service and Respondent commercially benefits from this confusion. Id. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iv).
Additionally, Complainant argues bad faith based on Respondent’s use of the customer support phone numbers for a “phishing” scheme. Use of a Complainant’s mark at a disputed domain name in furtherance of a phishing scheme may indicate bad faith registration and use under 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).”). Here, Complainant asserts that the phone numbers on Respondent’s webpage are not affiliated with the Complainant and that Respondent may be using them to collect confused users’ personal information. See Amend. Compl. Ex. 8. Therefore, the Panel concludes that Respondent used the disputed domain name to phish for Complainant’s customers’ personal information, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Furthermore, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the GMAIL mark prior to Respondent’s registration of the <gmailtechinfo.com> domain name. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established by the fame of the mark and a respondent’s use of it. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant provides screenshots of the webpages associated with the disputed domain name which show Respondent displaying the GMAIL mark and offering technical support services for Complainant’s email service. See Amend. Compl. Ex. 8. Complainant argues Respondent use of the disputed domain name to compete with Complainant demonstrates actual knowledge. Id. Therefore, the Panel infers, due to the fame of Complainant's mark and he manner of use of the disputed domain name that the Respondent had actual knowledge of Complainant’s rights in the mark prior to registration, thereby supporting a finding of bad faith under 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 <gmailtechinfo.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 4, 2018
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