Google LLC v. xiuying zeng
Claim Number: FA1912001875222
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is xiuying zeng (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <neststore.online> and <nestonline.store>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2019; the Forum received payment on December 13, 2019.
On December 16, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <neststore.online> and <nestonline.store> 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 December 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2020 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@neststore.online, postmaster@nestonline.store. Also on December 17, 2019, 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 January 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a multinational technology company based in the United States. It uses the NEST mark to offer hardware, software, and related services geared towards delivering home energy, safety, and security solutions. Examples of Complainant’s connected home products offered under the NEST mark include: the NEST LEARNING thermostat; the NEST CAM camera; the NEST PROTECT smoke and carbon monoxide alarm; the NEST SECURE alarm system; and the NEST HELLO video doorbell. Complainant has rights in the NEST mark through its registration in the United States in 2000.
Complainant alleges that the <neststore.online> domain name is confusingly similar to Complainant’s NEST mark as it incorporates the mark in its entirety, merely adding a generic term “store” and a “.online” generic top-level domain (“gTLD”). Similarly, the <nestonline.store> domain name is confusingly similar to Complainant’s NEST mark as it incorporates the mark in its entirety, merely adding a generic term “online” and a “.store” gTLD.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s NEST mark and is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain names resolve to a website that attempts to pass off as Complainant or an authorized retailer of Complainant’s products, and trick Internet users into providing personal and financial information through fraudulent online transactions.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in a pattern of bad faith registration. Respondent uses the disputed domain names to attract Internet users to its websites and commercially benefit via passing off in furtherance of phishing. Additionally, Respondent had actual knowledge of Complainant’s rights in the NEST mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark NEST and uses it to offer hardware, software, and related services geared towards delivering home energy, safety, and security solutions.
Complainant’s rights in its mark date back to at least 2000.
The disputed domain names were registered in 2019.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving websites display Complainant’s mark and logo and purport to offer for sale Complainant’s products.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain names both incorporate Complainant’s NEST mark in its entirety, merely adding a generic term (either “store” or “online”) and a gTLD (either “.online” or “.store”). The addition of a generic term and a gTLD fail to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (“The addition of top-level domains, such as “.club,” must also be ignored for the purposes of Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not authorized, licensed, or otherwise permitted Respondent to use its mark. Respondent is not commonly known by the disputed domain names: absent a reply, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information of record for the disputed domain names lists the registrant as “Xiuying Zeng.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(a)(ii).
Respondent uses the disputed domain names to pass off as Complainant or an authorized retailer of Complainant’s products, purporting to sell Complainant’s products. Use of a domain name to pass off as the complainant to divert Internet users for its commercial gain by offering Complainant’s products for sale without authorization may not be a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See, Invesco Ltd. v. Rana, FA 1733167 (Forum July 10, 2017) (“[A] general intent to divert Internet users by using a domain name for commercial gain, regardless of whether respondent is a competitor of complainant, is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also TechSmith Corp. v. Xiaoxia, FA 1732972 (Forum June 26, 2017) (“Diversion of Internet users seeking a complainant’s website to a respondent’s for said respondent’s commercial gain indicates a lack of rights and legitimate interests.”). Therefore, the Panel finds that Respondent does not use the disputed domain names to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent is diverting users to the resolving webpages which attempt to pass off as Complainant and purport to sell Complainant’s products without authorization. Diverting users to a disputed domain name may evince bad faith per Policy ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”). The Panel therefore finds that Respondent has registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the resolving webpages display Complainant’s mark and logo and purport to offer for sale Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per 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 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.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain names and that this constitutes 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 <neststore.online> and <nestonline.store> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 9, 2020
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