Google LLC v. David B Dennis Jr.
Claim Number: FA2004001893200
Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, District of Columbia, United States. Respondent is David B Dennis Jr. (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floogle.org>, registered with GoDaddy.com, LLC.
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 April 22, 2020; the Forum received payment on April 22, 2020.
On April 23, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <floogle.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 April 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@floogle.org. Also on April 27, 2020, 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.
A timely Response was received and determined to be complete on May 5, 2020.
An additional submission was received on behalf of Complainant and deemed to be complete on May 6, 2020.
An additional submission was received on behalf of Respondent and deemed to be complete on May 7, 2020.
On May 11, 2020, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant, Google LLC, has become one of the most highly recognized and widely used Internet search services in the world.
2. Complainant has rights in the GOOGLE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered Sep. 14, 2004). See Amend. Compl. Ex. 7.
3. Respondent’s <floogle.org> domain name is confusingly similar to Complainant’s GOOGLE mark as Respondent merely substitutes the initial letter “G” of Complainant’s mark with the letters “Fl,” creating a rhyming, sound-alike mark and adds the “.org” generic top-level domain (“gTLD”).
4. Respondent does not have rights or legitimate interests in the <floogle.org> domain name. Respondent is not licensed or authorized to use Complainant’s GOOGLE mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <floogle.org> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to direct Internet users to a website that may contain misleading information.
5. Respondent registered and uses the <floogle.org> domain name in bad faith. Respondent attempts to confuse Internet users and to attract them to its own website. Furthermore, Respondent had actual knowledge of Complainant’s GOOGLE mark when it registered the <floogle.org> domain name.
B. Respondent
Respondent made the following contentions.
1. Respondent’s <floogle.org> domain name is not confusingly similar to Complainant’s GOOGLE mark as it is a combination of the generic words “flu” and “googolplex.”
2. The <floogle.org> domain name is related to the website content which attempts to provide information related to COVID-19 to the public.
3. The <floogle.org> domain name was not registered or used in bad faith as Respondent does not mimic Complainant but rather, embeds information provided by Complainant. The disputed domain name is a parody of the GOOGLE mark.
4. Respondent simply wanted to provide information related to COVID-19 to the public.
C. Additional Submissions
Complainant
Complainant made the following additional contentions.
1. Respondent does not attempt to argue or dispute any of the points raised by Google in its Complaint, and in fact confirms that the “floogle.org” domain name is a combination of the “generic noun flu” with Complainant’s famous GOOGLE Mark, as Complainant previously alleged.
2. Respondent also confirms he embedded Complainant’s entire “Google Coronavirus Update page,” which prominently features the famous GOOGLE Mark, into the website associated with the disputed Domain Name.
3. Specifically, respondent does not attempt to argue that he has any authorization to use Complainant’s famous GOOGLE Mark, or that he is commonly known by the at-issue Domain Name.
4. Respondent asserts that the “Floogle.org” domain name is a “Google parody trademark” that is “protected under the First Amendment,” but offers no evidence as to how embedding, without alteration, Complainant’s website concerning the COVID-19 virus and pandemic qualifies as a “parody.” Indeed, Respondent himself confirms “[t]here is nothing subjective on www.floogle.org” that would qualify as speech or fair use.
5. Prior UDRP decisions have made clear that registration and use of a domain name in a manner identical to that of Respondent is not protected under the Policy.
6. The legitimate interest arising from the fundamental right of free speech – even if demonstrated, which in the present case it is not, does not include the right to register and use a domain name that is identical to or confusingly similar with that of Complainant.
7. Accordingly, Complainant reiterates its request for relief and that the Domain Name be transferred to Complainant.
Respondent
Respondent made the following additional contentions.
1. Respondent requests details of what day in March 2020 did Google announce it would be partnering with the United States Government and evidence of a written Partnership Agreement and the date on which that agreement was signed by an authorized US Government representative.)
2. Respondent requests particulars of how Complainant pivoted from the word “mimic” to the word “embedded”.
3. The argument that Respondent intended to mislead people into thinking <floogle.org> is a Google produced website/app by "mimicking" their Covid-19 website is a reckless and false assertion of which Respondent is not guilty. Respondent does not have the skills to even attempt to create a "Mimicked" website, which is completely different than "embedding" a website, that Respondent does. The display of the Google Coronavirus Update page was simply a courtesy "embedded" window link to that page that was only possible by Google allowing it to be displayed by their design code or webpage developers. Google sets every parameter by how that page can be viewed on other websites. Google allows their website to be "embedded" instead of only allowing the URL to be "embedded" instead of only allowing the URL to be "embedded.
4. Complainant allows its website to be "embedded" instead of only allowing the URL to be "embedded" instead of only allowing the URL to be "embedded". Upon being contacted by email by Complainant’s attorney as to Complainant not wanting their website to be "embedded" as they allow it to be, Respondent removed it in favor of "embedding" the CDC <coronavirus.gov> page that provides more accurate and helpful United States Federal Government approved information instead of the reckless links to news and opinions about Covid -19 that Complainant provides on its website.
5. Respondent attaches a photograph of the website at <floogle.org> as evidence to rebut Complainant’s submission that “[t]here is nothing subjective on www.floogle.org” that would qualify as speech or fair use”.
6. Respondent reiterates the significance of free speech which he submits is a fundamental privilege not a fundamental right of being a citizen of the United States of America.
1. Complainant is a United States company that is one of the most highly recognized and widely used Internet search services in the world
2. Complainant has established its trademark rights in the GOOGLE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered Sep. 14, 2004).
3. Respondent registered the <floogle.org> domain name on March 11, 2020.
4. Respondent uses the disputed domain name to direct Internet users to a website that may contain misleading information.
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.
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 to the GOOGLE mark based upon registration of the mark with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). 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)). Complainant provides copies of its USPTO registrations for the GOOGLE mark (e.g., Reg. No. 2,884,502, registered Sep. 14, 2004). See Amend. Compl. Ex. 7. Therefore, the Panel finds that Complainant has rights in the GOOGLE mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GOOGLE mark. Complainant submits that Respondent’s <floogle.org> domain name is confusingly similar to Complainant’s GOOGLE mark as Respondent merely adds a modifier and a gTLD to the mark. Misspelling of a mark by substituting letters in order to create a phonetically similar domain name and adding a gTLD does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See America Online, Inc. v. Peppler, FA 103437 (Forum Feb. 22, 2002) (finding “The word ‘quest’ and ‘crest’ are similar in sound and are phonetically similar and thus these two words may be considered confusingly similar); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely substitutes the initial letter “G” of Complainant’s mark with the letters “Fl,” creating a rhyming, sound-alike word, presumably to invoke the notion of a combination of “ flu” and “Google” and adds the “.org” gTLD to Complainant’s GOOGLE mark. The Panel agrees with Complainant’s arguments and finds that the <floogle.org> domain name is confusingly similar to the GOOGLE mark per 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 trademark and to use it in its domain name, merely substituting the initial letter “G” of the mark with the letters “Fl,” creating a rhyming, sound-alike mark presumably to invoke the notion of a combination of “flu” and “Google” which does not negate the confusing similarity between the domain name and the trademark but adds to it;
(b) Respondent registered the <floogle.org> domain name on March 11, 2020;
(c) Respondent uses the disputed domain name to direct Internet users to a website that may now or in the future contain misleading information promoted under the banner of Complainant and wrongly associated with it;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <floogle.org> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the GOOGLE mark and is not commonly known by the disputed domain name. 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, FA1408001574905 (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 demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (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 “David B Dennis Jr.,” and there is no other evidence to suggest Respondent was authorized to use the GOOGLE mark or is commonly known by the disputed domain name. See Amend. Compl. Ex. 4. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <floogle.org> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to pass himself off as Complainant by using Complainant’s GOOGLE trademark on his website in order to redirect Internet users to its own website. A domain name registrant passing itself off as a complainant in order to redirect users to its own website does not give rise to a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, Complainant provides screenshots of the disputed domain name which resolves to a website that features information concerning the coronavirus pandemic, but which also prominently features the famous GOOGLE mark and logo, and includes content that directly mimics Complainant’s own COVID-19 information and resources website. See Amend. Compl. Exs. 8&9. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. It then remains to be seen if Respondent has rebutted the prima facie case against him.
The Panel has considered the arguments of Respondent in that regard that are set out in the Contentions section of this decision. The Panel finds that they do not rebut the prima facie case.
In particular, Respondent principle arguments are that the <floogle.org> domain name was not registered or used in bad faith as Respondent does not mimic Complainant but rather, embeds information provided by Complainant. He also argues that the disputed domain name has given rise to a parody of the GOOGLE mark, which is protected free speech. He also says that he simply wanted to provide information related to COVID-19 to the public. Respondent is wrong on all of those matters.
Respondent has in fact mimicked or copied what is on Complainant’s own website , presumably to give his own website an air of authenticity which it otherwise lacks. What he may not realize is that whatever else can be said of his conduct it is a breach of Complainant’s intellectual property rights. It is also potentially dangerous to users if other information is included which is false and dangerous to them and it in effect presents that information under the Google name which will be accepted by users as being under Complainant’s imprimatur.
That leads to the other important point which is that Respondent is incorrect is submitting that he is and is entitled to present information to the public by the means he has adopted. Respondent has wide scope to present material on the internet. But what he does not have is the right to present it under the imprimatur of Complainant and as if he were Complainant.
Secondly, what he has created is not a parody as he is reproducing part of Complainant’s own material and is not using it as a parody.
Accordingly, 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 argues that Respondent has registered and uses the <floogle.org> domain name in bad faith because Respondent is attempting to attract Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon and likely to be for commercial gain if allowed to go unchecked,. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name falsely to indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that is phonetically similar to Complainant’s GOOGLE mark, and giving the impression that interested individuals will receive information regarding Complainant. The fact is individuals are sent to a webpage that attempts to pass off as Complainant while providing information concerning the coronavirus. See Amend. Compl. Ex. 8. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s GOOGLE mark. While constructive notice of a complainant’s mark is usually not successful for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (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 submits that the fame and unique qualities of the GOOGLE mark, which was adopted by Complainant prior to the registration of the disputed domain name, render it wholly implausible that Respondent created the domain name independently of his knowledge of the GOOGLE trademark. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark, which constitutes bad faith under Policy ¶ 4(a)(iii).
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 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 <floogle.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 12, 2020
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