Google Inc. v. MARK STOKES
Claim Number: FA1604001668494
Complainant is Google Inc. (“Complainant”), represented by Morgan A. Champion of Cooley LLP, California, USA. Respondent is MARK STOKES (“Respondent”), Gibraltar.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wallet-google.com>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.com; and <wallet-help-center-google.com>, registered with Freeparking Domain Registrars, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2016; the Forum received payment on April 4, 2016.
On April 4, 2016, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the Forum that the <wallet-google.com> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the name. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.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 April 5, 2016, Freeparking Domain Registrars, Inc. confirmed by e-mail to the Forum that the <wallet-help-center-google.com> domain name is registered with Freeparking Domain Registrars, Inc. and that Respondent is the current registrant of the name. Freeparking Domain Registrars, Inc. has verified that Respondent is bound by the Freeparking Domain Registrars, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On April 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2016 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@wallet-google.com, postmaster@wallet-help-center-google.com. Also on April 5, 2016, 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 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Policy ¶ 4(a)(i)
Complainant has registered rights in the GOOGLE mark. Respondent’s <wallet-google.com> and <wallet-help-center-google.com> domain names are confusingly similar to the GOOGLE mark because they each contain the mark, along with only hyphens, descriptive terms, and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <wallet-google.com> and <wallet-help-center-google.com> domain names because available WHOIS information lists “MARK STOKES” as Registrant and because Respondent is not authorized to use the GOOGLE mark. Respondent fails to use the <wallet-google.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it redirects Internet users to Complainant’s own website. Respondent fails to use the <wallet-help-center-google.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it has been used to engage and phishing and currently resolves to an inactive website.
Policy ¶ 4(a)(iii)
Respondent uses the <wallet-google.com> domain name in bad faith because it redirects Internet users to Complainant’s own website. Respondent uses the <wallet-help-center-google.com> domain name in bad faith because it has been used to engage in phishing and currently resolves to an inactive website. Respondent registered the domain names in bad faith because it did so with actual knowledge of Complainant’s famous GOOGLE. Respondent’s registration of domains incorporating the GOOGLE mark was done in opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google, Inc. of Mountain View, CA, USA. The GOOGLE name was created in 1997 in association with Internet services and since that time has become renowned as one of the largest, most highly recognized, and widely used Internet services in the world. Complainant owns numerous domestic and foreign registrations for the GOOGLE mark and other related marks dating back to 1999.
Respondent is Mark Stokes of Gibraltar. Respondent’s registrar’s addresses are listed as Dusseldorf, Germany and Wilmington, DE, USA. The Panel notes that the <wallet-google.com> domain was registered on or about March 1, 2016 and the <wallet-help-center-google.com> domain name was registered on or about February 29, 2016.
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 registered rights in the GOOGLE mark. Complainant’s evidence reflects registration information for the mark internationally, and domestically with the United States Patent and Trademark Office (e.g., Reg. No. 2,884,502, registered on September 14, 2004). Accordingly, the Panel finds that Complainant has rights in the GOOGLE mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complainant argues that Respondent’s <wallet-google.com> and <wallet-help-center-google.com> domain names are confusingly similar to the GOOGLE mark because they each contain the mark, along with terms such as “wallet,” “help,” and “center.” The Panel notes that the domains also contain hyphens and the gTLD “.com.” Complainant contends that the terms “wallet,” “help,” and “center,” are descriptive of the way in which Complainant uses the GOOGLE mark, in relation with its “Google Wallet” branded services. The Panel finds the added terms descriptive, and that the <wallet-google.com> and <wallet-help-center-google.com> domain names are confusingly similar to the GOOGLE mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by the <wallet-google.com> and <wallet-help-center-google.com> domain names because the available WHOIS information lists “MARK STOKES” as Registrant and because Respondent is not authorized to use the GOOGLE mark. Respondent has provided no evidence to the contrary, therefore the Panel finds that Respondent is not commonly known by the <wallet-google.com> and <wallet-help-center-google.com> domain names according to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent fails to use the <wallet-google.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it redirects Internet users to Complainant’s own website. Complainant has provided a screenshot to show this redirection. The Panel finds that Respondent fails to use the <wallet-google.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”).
Complainant also argues that Respondent fails to use the <wallet-help-center-google.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it has been used to engage in phishing and currently resolves to an inactive website. Complainant has provided a historical screenshot as evidence of Respondent’s previous operation of the domain name to mimic Complainant for the purpose of obtaining information about Internet users. Complainant has also provided a current screenshot, to show that the resolving website currently contains an inactive website. The Panel finds that Respondent fails to use the <wallet-help-center-google.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant has not made any arguments about Respondent’s bad faith which are specifically enumerated in Policy ¶ 4(b). However, panels have agreed that the Policy is illustrative, but not exclusive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant maintains that Respondent uses the <wallet-google.com> domain name in bad faith because it redirects Internet users to Complainant’s own website. Complainant has provided a screenshot to show this. The Panel finds this evidence sufficient to conclude that Respondent uses the <wallet-google.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant contends that Respondent uses the <wallet-help-center-google.com> domain name in bad faith because it has been used to engage in phishing and currently resolves to an inactive website. Complainant has provided a historical screenshot to demonstrate that Respondent had been using the domain to trick Internet users into giving away personal and financial information. Complainant has also provided a current screenshot to show that the resolving website contains an inactive page. The Panel finds this evidence sufficient to support a finding that Respondent has registered and uses the <wallet-help-center-google.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant also argues that Respondent’s registration of domains incorporating the GOOGLE mark was done as opportunistic bad faith. Complainant claims that based on the strength of the GOOGLE mark in association with Complainant, the use of the mark, alone, by Respondent is suggestive of bad faith registration. The Panel agrees that the mark is so closely identified with Complainant, that Respondent’s registrations of the <wallet-google.com> and <wallet-help-center-google.com> domain names were done in opportunistic bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wallet-google.com> and <wallet-help-center-google.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 12, 2016
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