Google LLC v. zhixion ling
Claim Number: FA2007001903024
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is zhixion ling (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nestpro.xyz>, <salenest.site>, <nestsolu.today>, <nestelect.com>, and <devnest.online>, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2020; the Forum received payment on July 6, 2020.
On July 7, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nestpro.xyz>, <salenest.site>, <nestsolu.today>, <nestelect.com>, and <devnest.online> 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 July 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@nestpro.xyz, postmaster@salenest.site, postmaster@nestsolu.today, postmaster@nestelect.com, postmaster@devnest.online. Also on July 10, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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, Google LLC, is one of the most highly recognized and widely used Internet search services in the world. The search engine maintains one of the world’s most impressive collections of indexed online content. Complainant has rights in the NEST mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,357,817, registered June 13, 2000). Respondent’s <nestpro.xyz>, <salenest.site>, <nestsolu.today>, <nestelect.com>, and <devnest.online> domain names are confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s NEST mark and adds the generic terms “bee” and “AI” along with the “.xyz,” “.site,” “.today,” “.com,” and “.online” generic top-level domains (“gTLDs”)
Respondent does not have rights or legitimate interests in the <nestpro.xyz>, <salenest.site>, <nestsolu.today>, <nestelect.com>, and <devnest.online> 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 does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to pass off as Complainant and redirect users who are seeking Complainant’s products and/or services to a website that has no affiliation with Complainant.
Respondent registered and uses the <nestpro.xyz>, <salenest.site>, <nestsolu.today>, <nestelect.com>, and <devnest.online> domain names in bad faith. Respondent makes no active use of the disputed domain names. Respondent had knowledge or Complainant’s rights in the NEST mark when registering the domain names, as shown through Respondent’s use of Complainant’s mark. Respondent registered the disputed domain names in an act of opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <nestpro.xyz>, <salenest.site>, <nestsolu.today>, <nestelect.com>, and <devnest.online> domain names on June 11, 2020.
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”).
Complainant asserts rights in the NEST mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 2,357,817, registered June 13, 2000). Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (FORUM Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides evidence of registration of the NEST mark with the USPTO. Therefore, the Panel finds that Complainant has the rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <nestpro.xyz>, <salenest.site>, <nestsolu.today>, <nestelect.com>, and <devnest.online> domain names are confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s NEST mark, adding the generic terms “bee” and “AI” to the mark along with the “.xyz,” “.site,” “.today,” “.com,” and “.online” gTLDs to the mark. However, Respondent does not, in fact, add those terms to the mark but rather adds the terms “pro,” “sale,” “solu,” “elect,” “dev.” The Panel finds the terms “pro,” “sale,” “solu,” “elect,” and “dev” to be generic, “solu” being short for “solution” and “dev” being short for “development.” However, it is unclear what the term “elect” means in this context, and Complainant does not present argument that the term “elect” is generic in this context. Therefore, the Panel does not find confusing similarity between Complainant’s mark and the <nestelect.com> domain name, but does find confusing similarities with respect to Respondent’s other disputed domain names.
Complainant argues that Respondent does not have rights or legitimate interests in the <nestpro.xyz>, <salenest.site>, <nestsolu.today>, <nestelect.com>, and <devnest.online> domain names because Respondent is not authorized to use Complainant’s NEST mark and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1620789 (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 notes “zhixion ling” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the NEST marks in any way. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to mislead consumers and direct them to the website they may believe is affiliated with Complainant. Use of a disputed domain name to divert web users to a respondent’s site and confuse them into believing that some sort of affiliation with a complainant exists may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Respondent’s use of the NEST mark is misleading because users are not in fact directed to Complainant’s products or services. Further, Respondent provides screenshots of the disputed domain names’ resolving webpage which appears to feature Complainant’s products for sale. Thus, the Panel finds that Respondent’s use of the domain name indicates that it lacks right and legitimate interests in the disputed domain names per Policy ¶ 4(c)(i) and (ii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s use of the disputed domain names to pass off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1579141 (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.”). Complainant claims the at-issue domain names resolve to a website upon which Respondent displays a facsimile of Complainant’s logo and offers what appear to be Complainant’s products for sale in direct competition with Complainant’s business. The Panel therefore finds that Respondent registered and used the domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
The Panel finds that Respondent had knowledge of Complainant’s rights in the NEST mark when registering the disputed domain names, all including the NEST mark in their entireties, and that such knowledge shows bad faith. Further, the Complainant argues that Respondent’s use of the disputed domain names to pass off as Complainant indicates Respondent’s knowledge of Complainant’s rights in the mark. The Panel agrees, and finds bad faith registration and use under Policy ¶ 4(a)(iii).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy for all disputed names except for <nestelect.com>, the Panel concludes that relief shall be GRANTED with respect to such domains.
Accordingly, it is Ordered that the <nestpro.xyz>, <salenest.site>, <nestsolu.today>, and <devnest.online> domain names be TRANSFERRED from Respondent to Complainant.
Having not established the first of the three elements required under the ICANN policy with respect to the domain <nestelect.com>, the Panel concludes that relief shall be DENIED with respect to that domain name. Accordingly, it is ordered that the <nestelect.com> domain name REMAIN with Respondent.
David A. Einhorn Panelist
Dated: August. 19, 2020
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