Google LLC v. Tim C Hovey / Wallets / Khan Rauf / Ads / Abdul Rauf / document / Khan Abdul Rauf / Flights / Kenneth F Gomez / Play Store / Harriett F Smith / Cloud
Claim Number: FA2102001932032
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Tim C Hovey / Wallets / Khan Rauf / Ads / Abdul Rauf / document / Khan Abdul Rauf / Flights / Kenneth F Gomez / Play Store / Harriett F / Cloud (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlewallet.org>, <googleadsense.org>, <googledoc.net>, <googleflight.net>, <googleplaystore.net>, and <googlecloudstorage.net>, registered with Tucows Domains 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2021; the Forum received payment on February 12, 2021.
On February 15, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <googlewallet.org>, <googleadsense.org>, <googledoc.net>, <googleflight.net>, <googleplaystore.net>, and <googlecloudstorage.net> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 February 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2021 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@googlewallet.org, postmaster@googleadsense.org, postmaster@googledoc.net, postmaster@googleflight.net, postmaster@googleplaystore.net, postmaster@googlecloudstorage.net. Also on February 24, 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 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 March 17, 2021, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the disputed domain names are all controlled by the same person because none of the WHOIS addresses are associated with genuine locations, the domain names were all registered within a two-month span, none of the domain names resolve to active websites, and each of the domain names is associated with an unsolicited email from Respondent offering the domain for sale to Complainant. Complainant also shows that there are various similarities and commonalities in the names and emails associated with each of the domain names in the WHOIS information. This Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
A. Complainant
Complainant, Google LLC, is the operator of the highly used internet search engine, Google. In addition to the search engine, Complainant currently offers other products such as “Google Wallet” (now known as “Google Pay”), “Google Docs”, “Google Play”, “Google Cloud”, and “Google AdSense”. These products incorporate Complainant’s GOOGLE mark which is registered with the United States Patent and Trademark Office (USPTO) (e.g. Reg. No. 2,806,075, Registered on Jan 24, 2012). The Disputed Domain Names, <googlewallet.org>, <googleadsense.org>, <googledoc.net>, <googleflight.net>, <googleplaystore.net>, and <googlecloudstorage.net>, are identical or confusingly similar to the GOOGLE mark because the Disputed Domain Names entirely incorporate the mark along with generic terms and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Disputed Domain Names because Respondent is not commonly known by any of the Disputed Domain Names or Complainant’s mark. Respondent is not making a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names because Respondent is failing to make active use of the domain names.
Respondent registered and uses the Disputed Domain Names in bad faith because Respondent was selling the Disputed Domain Names to Complainant. Respondent also displays a pattern of bad faith through registration of multiple domain names in the present proceeding. Finally, Respondent fails to make active use of the Disputed Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes the dates each disputed domain name was registered: <googleplaystore.net> was registered on September 23, 2020; <googlecloudstorage.net> was registered on September 24, 2020; <googledoc.net> was registered on September 30, 2020; <googlewallet.org> was registered on October 7, 2020; <googleflight.net> was registered on October 9, 2020; and <googleadsense.org> was registered on October 17, 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 claims rights in the GOOGLE mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence that it has registered its GOOGLE mark with the USPTO (e.g. Reg. No. 2,806,075, Registered on Jan 24, 2012). Considering this showing of registration with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the Disputed Domain Names are confusingly similar because they wholly incorporate Complainant’s GOOGLE mark and add generic terms. A domain name may be found to be cofusingly similar, under Policy ¶ 4(a)(i), if it wholly incorporates a complainant’s mark despite the addition of other descriptive words to the mark. Here, each of the Disputed Domain Names each wholly incorporate Complainant’s GOOGLE mark and adds descriptive terms such as “wallet”, “adsense”, “doc”, “flight”, “playstore”, and “cloudstorage.” Therefore, the Panel finds that the Disputed Domain Names are identical or confusingly similar under Policy ¶ 4(a)(i).
Complainant first argues that Respondent does not have any rights or legitimate interests in the Disputed Domain Names because Respondent is not commonly known by any of the Disputed Domain Names nor by Complainant’s mark. Under Policy ¶ 4(c)(ii), a respondent has no rights or legitimate interests in a disputed domain name where the identifying information obtained in the WHOIS data is unrelated to the domain name. See e.g., CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1589962 (Forum Jan. 1, 2015). The WHOIS information provided by Complainant lists the registrants of the domain names as “Tim C Hovey / Khan Rauf / Abdul Rauf / Khan Abdul Rauf / Kenneth F Gomez / Harriet F Smith.” As the WHOIS information for these domain names are unrelated to the term “Google”, the Panel finds that Respondent is not commonly known by the Disputed Domain Names under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent has failed to use the Disputed Domain Names for any bona fide offering of goods or services or for any legitimate noncommercial or fair use due to the inactive uses of the Disputed Domain Names. Failure to make active use of a disputed domain name supports a finding that the domain name is not being used in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018). Complainant asserts that since the time the Disputed Domain Names were registered, the webpages associated with the Disputed Domain Names remained inactive. Complainant provides screenshots of each of the Disputed Domain Names. The messages displayed when accessing the Disputed Domain Names are either, “400 – Bad Request” or “This site can’t be reached”. None of these Disputed Domain Names resolve to an active webpage. Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services, nor is it making a legitimate or noncommercial fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant finally argues that Respondent has no rights or legitimate interests due to Respondent’s acts of offering to sell the Disputed Domain Names to Complainant. An offer for sale provides additional evidence that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See, e.g., 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017). Complainant provides screenshots of emails from Respondent stating that Respondent is a holder of one of the disputed domain names and is offering to sell the domain name. The Panel finds that such evidence of offers to sell further demonstrate a lack of rights and legitimate interests.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant first argues that Respondent registered the Disputed Domain Name in bad faith because Respondent offered it for sale to Complainant. Bad faith registration with intent to sell may be found, under Policy ¶ 4(b)(i), where Respondent offers for sale a disputed domain name it has registered and of which it has failed to make active use. Complainant provides screenshots of the websites associated with the Disputed Domain Names and of the email communications with Respondent. The screenshots of the webpages displays error messages such as “400 – Bad Request” or “This site can’t be reached”. This showing of error messages and no content on the webpages infers inactive uses. Complainant provides email conversations where Respondent offers the Disputed Domain Names for sale with Complainant. Each of the Disputed Domain Names start with the message, “Sir I want to give [disputed domain name] back to [Complainant]” and “Sir . . . I have a domain Called [disputed domain name] and I want to Sell this domain to [Complainant].” With the showing of these sale offers and the inactive use of the Disputed Domain Names, the Panel finds bad faith registration under Policy ¶ 4(b)(i).
Complainant next argues registration in bad faith because there are six domain names disputed in the present case. Bad faith registration may be found under Policy ¶ 4(b)(ii) where multiple domain names in dispute are registered by a registrant during the same time frame . See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sept. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”). There are six domain names in dispute here. All six Disputed Domain Names were registered within a month of each other. The Panel therefore also finds bad faith registration under Policy ¶ 4(b)(ii).
Thus, Complainant has also satisfied 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 <googlewallet.org>, <googleadsense.org>, <googledoc.net>, <googleflight.net>, <googleplaystore.net>, and <googlecloudstorage.net> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 1, 2021
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