Google LLC v. Jane Dew
Claim Number: FA2012001926265
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Jane Dew (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xn--gmal-nza.com>, <googleplaysetvices.com>, <googledocsusercontent.com>, <googlecameramod.com>, <google-avscan.com>, <btgoogle.cc> and <avgoogle.net> (“the Domain Names”), registered respectively with Dropcatch.Com 1356 Llc; Dropcatch.Com 1340 Llc; Dropcatch.Com 438 Llc; Dropcatch.Com 485 Llc; Dropcatch.Com 1351 Llc; Turncommerce, Inc. Dba Namebright.Com and Dropcatch.Com 1319 Llc (“the Registrars”).
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2020. The Forum received payment on December 23, 2020.
On December 29, 2020, Turncommerce, Inc. Dba Namebright.Com, on behalf of the Registrars, confirmed by e-mail to the Forum that the Domain Names are registered with the Registrars and that Respondent is the current registrant of the names. Turncommerce, Inc. Dba Namebright.Com has verified that Respondent is bound by the Registrars’ registration agreements 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 January 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registrations as technical, administrative, and billing contacts, and to postmaster@xn--gmal-nza.com, postmaster@googleplaysetvices.com, postmaster@googledocsusercontent.com, postmaster@googlecameramod.com, postmaster@google-avscan.com, postmaster@btgoogle.cc and postmaster@avgoogle.net. Also on January 4, 2021, 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 registrations 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 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: INTERNATIONALIZED DOMAIN NAME
The domain name <xn--gmal-nza.com>, is a PUNYCODE translation of the internationalized domain name (“IDN”) <gmaıl.com. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters, in this case “ı” instead of “i”. In order to display such characters in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the IDN properly in the <gmaıl.com> domain name, it first had to decode it from the <xn--gmal-nza.com> domain name.
Previous panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name).
This Panel finds that the domain name <xn--gmal-nza.com> is the same as its PUNYCODE translation, <gmaıl.com>, for the purposes of this proceeding.
A. Complainant
The Domain Names are confusingly similar to the famous trademarks GOOGLE and GMAIL in which Complainant has rights.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names nor has Respondent been authorized by Complainant to use the GOOGLE or GMAIL marks.
The domain names <xn--gmal-nza.com> (gmaıl.com), <google-avscan.com>, <googlecameramod.com> and <avgoogle.net> automatically redirect users to commercial websites. The domain names <btgoogle.cc>, <googledocsusercontent.com> and <googleplaysetvices.com> resolve to pay-per-click webpages, some of which include links referring to Complainant and its GOOGLE mark. Given the widespread fame and popularity of Complainant’s products and services, it is unsurprising that Respondent has sought to trade on Complainant’s GOOGLE and GMAIL marks in order to generate traffic from confused consumers. Furthermore, as a part of the commercial scheme, Respondent may receive referral fees, either through immediate redirection to third-party sites or through pay-per-click links on parked pages. Thus, Respondent is not making a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Names.
Respondent registered and uses the Domain Names in bad faith. Respondent has a pattern of bad faith registration and had actual knowledge of Complainant’s rights to the GOOGLE and GMAIL mark prior to registering the Domain Names as Complainant’s marks are famous.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the GOOGLE mark through registrations in numerous countries, including with the United States Patent and Trademark Office (“USPTO”), (e.g. Registration No. 2,954,071, registered on May 24, 2005) and in the Cayman Islands, the location of Respondent (e.g. Registration No. 2410931, registered on June 7, 2010). Complainant has also shown that it has rights in the GMAIL mark through registrations in numerous countries, including with the USPTO, (e.g. Registration No. 3,150,462, registered on October 3, 2006) and in the Cayman Islands (e.g. Registration No. UK2442046, registered on October 13, 2009).
Respondent’s <xn--gmal-nza.com> domain name is virtually identical to Complainant’s GMAIL mark as the domain name contains an almost imperceptible misspelling of the entire GMAIL mark and is merely a PUNYCODE iteration of the IDN <gmaıl.com>, in which the character “ı” replaces the letter “i”.
Respondent’s <googleplaysetvices.com>, <googledocsusercontent.com>, <googlecameramod.com>, <google-avscan.com>, <btgoogle.cc>, and <avgoogle.net> domain names are confusingly similar to Complainant’s GOOGLE mark as they entirely incorporate the GOOGLE mark, merely adding descriptive terms (misspelled in the case of <googleplaysetvices.com>) that do nothing to detract from the distinctiveness of the GOOGLE mark.
The inconsequential top-level domains “.com”, “.cc”, and “.net” may be disregarded for the purposes of this element.
Complainant has established this element.
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Complainant has shown that the GOOGLE and GMAIL marks had become famous long before Respondent registered the Domain Names, as follows:
<googleplaysetvices.com> February 2, 2019.
<avgoogle.net> February 17, 2019.
<xn--gmal-nza.com> (<gmaıl.com>) February 27, 2019.
<googlecameramod.com> January 16, 2020.
<btgoogle.cc> February 2, 2020.
<googledocsusercontent.com> March 9, 2020.
<google-avscan.com> April 8, 2020.
There is no evidence under Policy ¶ 4(c)(ii) that Respondent has been commonly known by any of the Domain Names, which redirect users to commercial websites or to pay-per-click webpages.
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show she does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names under Policy ¶ 4(a)(ii).
Complainant has established this element.
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
It is clear from the circumstances described above in relation to the second element that Respondent was well aware of Complainant’s famous GOOGLE and GMAIL marks when registering the Domain Names and did so intentionally to attract, for commercial gain, Internet users to the websites to which the Domain Names resolve, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of those websites or of products or services promoted on those websites.
The Panel therefore finds that Respondent registered and is using the Domain Names in bad faith under Policy ¶ 4(b)(iv).
Complainant has established this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--gmal-nza.com>, <googleplaysetvices.com>, <googledocsusercontent.com>, <googlecameramod.com>, <google-avscan.com>, <btgoogle.cc> and <avgoogle.net> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: February 1, 2021
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