Google LLC v. Chen Weilong
Claim Number: FA1808001803596
Complainant is Google LLC (“Complainant”), represented by Aimee R. Gibbs of Dickinson Wright PLLC, Michigan, USA. Respondent is Chen Weilong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlechrome2018.net> and <newchromeonline.com>, registered with Name.com, Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2018; the Forum received payment on August 27, 2018.
On August 28, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <googlechrome2018.net> and <newchromeonline.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@googlechrome2018.net, postmaster@newchromeonline.com. Also on August 30, 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 September 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant, Google LLC, runs one of the most highly recognized and widely used Internet search services in the world and also publishes one of the most popular internet browser applications. Complainant has rights in the GOOGLE, GOOGLE CHROME, and CHROME trademarks based upon registrations with multiple national agencies, including the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for industry and Commerce (“SAIC”). Respondent’s <googlechrome2018.net> and <newchromeonline.com> domain names are confusingly similar to Complainant’s marks because they wholly incorporate the GOOGLE, GOOGLE CHROME, or CHROME marks, while adding a descriptive terms “new,” “online,” or “2018” and the “.net” or “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <googlechrome2018.net> and <newchromeonline.com> domain names. Respondent is not licensed or authorized to use Complainant’s GOOGLE, GOOGLE CHROME, or CHROME marks and is not commonly known by the disputed domain names. Additionally, Respondent is not using the <googlechrome2018.net> and <newchromeonline.com> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to pass itself off as Complainant in order to either offer malware downloads to Complainant’s customers or offer software that competes with Complainant.
Respondent registered and uses the <googlechrome2018.net> and <newchromeonline.com> domain names in bad faith. It had actual knowledge of Complainant’s rights in the GOOGLE, GOOGLE CHROME, and CHROME marks prior to registering the disputed domain names and Respondent has previously registered domain names that incorporate Complainant’s marks which demonstrates a pattern of bad faith. Respondent also attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain names which offer software products that compete with Complainant and attempt to download malware onto the devices of Complainant’s customers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names 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 names; and
(3) the domain names have been registered and are being used 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:
(4) each of the domain names registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain names; and
(6) the domain names have been registered and are 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 claims to have rights in the GOOGLE, GOOGLE CHROME, and CHROME marks based upon its registration thereof with multiple national agencies. Registration of a mark with appropriate trademark authorities can be evidence of rights in the 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.”). Complainant provides copies of its trademark registrations for the GOOGLE, GOOGLE CHROME, and CHROME marks in the United States, China, and the European Union, as well as a table of these and other registrations in many other countries around the world. Therefore, the Panel finds that Complainant has rights in the marks per the threshold standard of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <googlechrome2018.net> and <newchromeonline.com> domain names are confusingly similar to Complainant’s marks because they wholly incorporate the GOOGLE, GOOGLE CHROME, or CHROME marks while adding descriptive terms and a gTLD. The addition of a descriptive term to a complainant’s mark typically does not sufficiently mitigate any confusing similarity between the disputed domain name from the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). Further, the “.com” or “.net” gTLD are typically disregarded in the confusing similarity analysis as these gTLDs rarely add any substantive meaning to a domain name. 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 wholly incorporates Complainant’s GOOGLE, GOOGLE CHROME, or CHROME marks, and adds descriptive terms thereto: the <googlechrome2018.net> domain name includes the additional term “2018” following the mark and the <newchromeonline.com> domain name includes the term “new” preceding the mark and the term “online” following the mark. Complainant contends these terms added to Complainant’s marks are descriptive of, and relate to Respondent’s use of the disputed domain names to offer new, purported software products. In addition the disputed domain names incorporate the “.net” or “.com” gTLD.
Accordingly, the Panel concludes that Respondent’s <googlechrome2018.net> and <newchromeonline.com> domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 has no rights or legitimate interests in <googlechrome2018.net> and <newchromeonline.com> domain names. Specifically Complainant states that Respondent is not licensed or authorized to use the GOOGLE, GOOGLE CHROME, or CHROME marks and asserts that it is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (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.) Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (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). The WHOIS information of record identifies Respondent as “Chen Weilong,” and there is no evidence to suggest that Respondent is known otherwise or was authorized to use Complainant’s GOOGLE, GOOGLE CHROME, or CHROME marks. The Panel therefore finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant also asserts that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant claims Respondent is using the <googlechrome2018.net> and <newchromeonline.com> domain names to pass itself off as Complainant in order to download third-party software and malware onto the devices of Complainant’s customers or to offer services that compete with Complainant. Passing oneself off as a complainant in an attempt to distribute malicious software or offer competing goods or services does not constitute a bona fide offering or a legitimate use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use). Here, Complainant submits screenshots of the disputed domain names’ websites and points out that they prominently display Complainant’s marks, along with a design that is identical to Complainant’s logo. Further, the websites of the disputed domain names purport to offer a competing download of Complainant’s CHROME web browser, however, the download is actually deceptive and appears to consist of third-party software and malware.
Finally, Respondent does not claim, and the evidence does not support any notion that the disputed domain names are being fairly used (e.g., for comment, criticism, news reporting, or generically). While the words “new” and “chrome” each have generic meanings, the website of the <newchromeonline.com> domain name does not relate to these nor does it merely refer to Complainant’s products in a nominative manner. See Google LLC v. Adrian Ionescu, FA 1761717 (Forum January 8, 2018) (respondent no making a fair use of the domain name <getchrome.co>). As for the <googlechrome2018.net> domain name, the word “Google” in this specific spelling is a coined term of the Complainant[i] and it also is not being used in a nominative manner. Therefore, the Panel finds that the Respondent lacks rights and legitimate interests with respect to the disputed domain names pursuant to Policy ¶¶ 4(c)(i) and (iii).
In light of the above, and in the absence of any submission by Respondent, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names under Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s marks. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Complainant asserts that, given the fame of the GOOGLE, GOOGLE CHROME, and CHROME marks and the extensive media coverage of Complainant and its marks over many years, it is inconceivable that Respondent created the disputed domain names without knowledge of Complainant’s marks. Further, Complainant argues that Respondent’s registration of two domain names, its brand-like use of the marks, and prior registrations of domain names incorporating the GOOGLE, GOOGLE CHROME, and CHROME marks further demonstrates actual knowledge. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the GOOGLE, GOOGLE CHROME, and CHROME marks when it registered and subsequently used the <googlechrome2018.net> and <newchromeonline.com> domain names thereby providing a sound foundation for an assertion of bad faith under Policy ¶ 4(a)(iii).
Next, Complainant contends that Respondent is disrupting Complainant’s business and diverting users to the disputed domain names to offer competing software services. Using a disputed domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 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.”). The Panel notes that Complainant provides screenshots showing the step-by-step function of Respondent’s resolving websites for the <googlechrome2018.net> and <newchromeonline.com> domain names. These websites use Complainant’s marks and logos to divert potential users seeking Complainant’s software. The sites claim to offer a download of Complainant’s CHROME browser but actually load, onto a user’s device, third-party software with names that include ByteFence, DriverUpdate, and WinZip. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant Policy ¶¶ 4(b)(iii) and (iv).
Complainant further alleges that Respondent registered and is using the <googlechrome2018.net> and <newchromeonline.com> domain names in bad faith because Respondent uses the disputed domain names in attempt to download malware onto Internet users’ devices – presumably for identity theft or other commercial gain by Respondent or third parties. Using domain names to lure users to download malicious and unwanted software indicates bad faith per Policy ¶ 4(a)(iii). See Dell Inc. v. Versata Software, Inc. c/o Versata Hostmaster, FA 1246916 (Forum April 10, 2009) (where the disputed domain name is used to introduce malware onto an Internet user’s computer “the Panel finds Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). As previously mentioned, Complainant provides screenshots of the disputed domain names’ resolving webpages and their functions. These websites prominently display Complainant’s logos/marks and attempt to deceive Internet users into believing that users are being offered genuine software from Complainant. Instead, third-party and malicious software are downloaded. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant provides evidence that Respondent had previously registered other domain names incorporating Complainant’s GOOGLE, GOOGLE CHROME, and CHROME marks. A respondent’s registration of multiple domain names incorporating variants of the complainant’s mark may reflect a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA 1520008 (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)). Here, Complainant contends that Respondent is a serial cybersquatter by the fact that Respondent has registered at least four domain names containing Complainant’s GOOGLE, GOOGLE CHROME, or CHROME marks. As with the domain names in dispute, Respondent used the above two domain names to resolve to websites that distributed unwanted and malicious software under the guise of offering downloads of genuine “Google Chrome” software. Specifically, the domain names <googlechrome2016.com> and <googlechromelive.com> were registered by Respondent and ultimately disabled after Complainant submitted a notice to the registrar alerting it to the function of those names. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
In light of the above, and in the absence of any submission by Respondent, the Panel finds that Respondent has registered and uses the disputed domain names in 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 <googlechrome2018.net> and <newchromeonline.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 24, 2018
[i] The word for a number consisting of the digit 1 followed by one hundred zeroes is “googolplex” or “googol” which is spelled differently from the GOOGLE mark.
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