Google LLC v. Vu Quoc Hop
Claim Number: FA1811001816927
Complainant is Google LLC (“Complainant”), represented by Jonathan S. Batchelor of Dickson Wright PLLC, Arizona, USA. Respondent is Vu Quoc Hop (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goolgeplay.site>, registered with GMO Internet, Inc. d/b/a Onamae.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2018; the Forum received payment on November 16, 2018.
On November 20, 2018, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <goolgeplay.site> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.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 November 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@goolgeplay.site. Also on November 21, 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 December 16, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Google LLC, is Delaware limited liability company that uses the GOOGLE PLAY mark in connection with the most highly recognized and widely used Internet search services in the world. Complainant has rights in the GOOGLE PLAY mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,570,801, registered Sep. 25, 2018, filed Mar. 5, 2012). See Compl. Annex 12. Complainant also has rights in the GOOGLE mark per registration with the USPTO (e.g., Reg. No. 2,806,075 registered Jan. 20, 2004). See Compl. Annex 11. Respondent’s <goolgeplay.site> domain name is nearly identical and/or confusingly similar to Complainant’s GOOGLE PLAY mark, differing only by the order of two letters and the addition of a generic top-level domain name (“gTLD”).
Respondent lacks rights and legitimate interests in the <goolgeplay.site> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the GOOGLE or GOOGLE PLAY mark in any way. Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to divert Internet users to its own website where it passes off as Complainant for commercial gain. See Compl. Annexes 6 & 13.
Respondent registered and uses the <goolgeplay.site> domain name in bad faith as Respondent attempts to attract Internet users to the disputed domain name by creating a likelihood of confusion among Internet users by passing off as Complainant for commercial gain. See Compl. Annexes 6 & 13. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, Google LLC, is Delaware limited liability company that uses the GOOGLE PLAY mark in connection with the most highly recognized and widely used Internet search services in the world.
2. Complainant has rights in the GOOGLE PLAY mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,570,801, registered Sep. 25, 2018, filed Mar. 5, 2012).
3. Respondent registered the disputed domain name on February 22, 2018.
4. Respondent uses the disputed domain name to divert Internet users to its own website where it passes itself off as Complainant for commercial gain.
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.”).
Preliminary Issue: Language of Proceeding
Rule 11 provides in effect that the presumption in UDRP proceedings is that the proceeding is to be conducted in the language of the Registration Agreement applicable to the domain name in question. Complainant has submitted that the Registration Agreement here is in the English language and that consequently the proceeding should be conducted in the English language. The Panel has inspected the Registration Agreement annexed to the Complaint and notes that it is indeed in the English language. However, the registrar has advised the Panel that the language of the agreement is Japanese, not English. In that contingency Complainant has submitted that the Panel should exercise the undoubted discretion it has under Rule 11 to determine the language in which the proceeding is to be conducted and that it should be the English language. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant has made out a strong case for the proposition that the circumstances are such that the proceeding should be conducted in the English language. In that regard, Complainant has submitted that as Respondent is conversant and proficient in English the proceeding should be conducted in the English language. The Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is probably conversant and proficient in the English language. After considering all of the circumstances, the Panel determined that the proceeding should be conducted in the English language.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GOOGLE PLAY and GOOGLE marks based upon its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in the mark per Policy ¶ 4(a)(i), and the relevant date of rights can date back to the filing date of the trademark application. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (holding that “the relevant date for Complainant’s mark is the filing date.”). Complainant provides a copy of its USPTO registrations for the GOOGLE PLAY (Reg. No. 5,570,801, registered Sep. 25, 2018, filed Mar. 5, 2012) and GOOGLE (e.g., Reg. No. 2,806,075 registered Jan. 20, 2004) marks. See Compl. Annex 11. Therefore, under a Policy ¶ 4(a)(i) analysis, the Panel finds that Complainant has rights in the GOOGLE and GOOGLE PLAY marks.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GOOGLE and/or GOOGLE PLAY marks.
Complainant contends the <goolgeplay.site> domain name is nearly identical and/or confusingly similar to Complainant’s GOOGLE PLAY mark, differing only by the order of two letters (replacing “gl” with “lg”), and the addition of a gTLD. Transposing two letters and the addition of a gTLD may not be sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.); 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.”). Accordingly, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s GOOGLE PLAY mark under 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 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”).
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 PLAY trademark and to use it in its domain name;
(b) Respondent registered the disputed domain name on February 22, 2018;
(c) Respondent uses the disputed domain name to divert Internet users to its own website where it passes itself off as Complainant for commercial gain;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <goolgeplay.site> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the GOOGLE and/or GOOGLE PLAY marks in any way. WHOIS information may be used to show that respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 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). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). 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.”). Complainant provides the WHOIS information which identifies the registrant of the disputed domain name as “Vu Quoc Hop” and no information of the record indicates that Respondent is authorized to use the GOOGLE or GOOGLE PLAY marks in any fashion. Accordingly, while conducting a Policy ¶ 4(c)(ii) analysis, the Panel concludes that Respondent is not commonly known by the disputed domain name;
(f) Complainant contends that Respondent fails to use the <goolgeplay.site> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Complainant avers that Respondent attempts to mislead Internet users by passing itself off as Complainant. Use of a disputed domain name to pass off as complainant may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under 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). Complainant provides screenshots of the webpages associated with the disputed domain name along with screenshots of its own webpage, which show Respondent reproducing the GOOGLE PLAY mark and utilizes a substantially similar layout to feature its content. See Compl. Annexes 6 & 13. As such, the Panel finds when conducting its Policy ¶¶ 4(c)(i) and/or (iii) analysis that Respondent uses the disputed domain name to pass itself off as Complainant
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 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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent registered and uses the <goolgeplay.site> domain name in bad faith as Respondent attempts to attract Internet users to the disputed domain name by creating a likelihood of confusion among Internet users by passing itself off as Complainant for commercial gain. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshots of the webpages associated with the disputed domain name along with screenshots of its own webpage, which show Respondent reproducing the GOOGLE PLAY mark and utilizes a substantially similar layout to feature its content. See Compl. Annexes 6 & 13. Accordingly, the Panel agrees that Respondent attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered and uses the <goolgeplay.site> domain name in bad faith because Respondent had constructive and/or actual knowledge of Complainant’s mark prior to registration of the disputed domain name. The Panel notes that constructive knowledge is insufficient for a finding of bad faith, but actual knowledge of a complainant’s rights in a mark may indicate bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Where a mark is famous, respondent may be presumed to have actual knowledge of complainant’s mark under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant submits multiple rankings and awards received under the GOOGLE mark to prove the fame and recognition of the mark. See Annex 9. Accordingly, under a Policy ¶ 4(a)(iii) analysis the Panel concludes that Respondent had actual knowledge of Complainant’s mark prior to registering the disputed domain name.
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 name using the GOOGLE PLAY mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it 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 <goolgeplay.site> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 17, 2018
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