Google LLC v. Rachel F Baily
Claim Number: FA2102001933413
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Rachel F Baily (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleadmob.us>, <googleanalytics.us>, <googleblog.us>, <googlechrome.us>, <googledoodle.us>, <googledrive.us>, <googlefit.us>, <googlelens.us>, <googlepay.us>, and <googletrends.us> (the “disputed domain names”), registered with Porkbun LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2021; the Forum received payment on February 24, 2021.
On February 25, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <googleadmob.us>, <googleanalytics.us>, <googleblog.us>, <googlechrome.us>, <googledoodle.us>, <googledrive.us>, <googlefit.us>, <googlelens.us>, <googlepay.us>, and <googletrends.us> disputed domain names are registered with Porkbun LLC and that Respondent is the current registrant of the names. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 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@googleadmob.us, postmaster@googleanalytics.us, postmaster@googleblog.us, postmaster@googlechrome.us, postmaster@googledoodle.us, postmaster@googledrive.us, postmaster@googlefit.us, postmaster@googlelens.us, postmaster@googlepay.us, postmaster@googletrends.us. Also on February 26, 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 April 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates the Google search engine and associated products and services. Complainant has rights in the GOOGLE trademark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075, registered January 20, 2004) (hereinafter collectively referred to as the “GOOGLE Mark”). Respondent’s disputed domain names are identical or confusingly similar to Complainant’s GOOGLE Mark, Respondent lacks rights or legitimate interests in the disputed domain names, and Respondent registered and is using the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Additional email submissions were exchanged between the Respondent and the Complainant in 2021, specifically on 1/6, 3/19, 3/23, 4/5, and 4/21. The Panel has read and has accepted these submissions as part of the case. The emails referenced issues in this proceeding plus issues in other proceedings commenced by the Complainant against Respondent pertaining to other domain names. For example, in one email, Complainant claimed that the Respondent had registered 35 other “google” domain names, but Respondent denied Complainant’s claim.
In another email, Respondent said it would return all the domain names from the present case to Complainant, although it did not do so. In yet another, Respondent offered to sell the disputed domain names to Complainant at a price in excess of its out-of-pocket costs, although Complainant rejected the offer. The Respondent asked Complainant to suggest a price it would pay for the disputed domain names, but Complainant refused to negotiate a purchase of the disputed domain names. In correspondence dated March 23, the parties mutually agreed to enter into a stay of arbitration so that they could attempt to achieve a settlement in the matter. The stay of arbitration was granted. When a settlement could not be achieved, however, the Complainant made a stay removal request on April 20, which was granted, and the proceedings continued as before.
Complainant holds valid trademark rights in the GOOGLE Mark. The disputed domain names are confusingly similar to Complainant’s GOOGLE Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain names and that Respondent registered and is using the disputed domain names in bad faith.
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 the disputed domain names should be cancelled or transferred:
(1) the disputed domain names registered by Respondent are 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 disputed domain names; and
(3) the disputed domain names have been registered or are being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 Panel concludes that Complainant has rights in the GOOGLE Mark based on registration of the GOOGLE Mark with the USPTO (e.g., Reg. No. 2,806,075, registered January 20, 2004). Registration of a mark with governmental trademark authorities is sufficient to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
The Panel also concludes that the disputed domain names are confusingly similar to the GOOGLE Mark under the Policy ¶ 4(a)(i) as they include the entirety of the GOOGLE Mark and merely add descriptive terms, followed by the ccTLD “.us.” The addition of a descriptive term and a ccTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain names and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain names. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with any evidence of its rights or legitimate interests in the disputed domain names. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, even had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the GOOGLE Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Complainant has not authorized Respondent to use the GOOGLE Mark in any way.
Moreover, Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent does not make an active use of the disputed domain names. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) or (iv). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, the Panel concludes that Respondent engages in a pattern of bad faith registration by registering several domain names that were confusingly similar to Complainant’s Mark and then attempted to sell them to the Complainant. A respondent’s registration of multiple domains containing a famous mark indicates that a respondent engages in a pattern of bad faith per Policy ¶ 4(b)(ii). United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”); see also Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (finding a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because the respondent had previously acquired several domain names that reflected names of celebrities and requested payment from such celebrities for the transfer of the domain name registrations).
Here the Complainant provides evidence that in addition to the 10 disputed domain names in this case, Respondent has also registered 6 other disputed domain names in another pending UDRP case and provides evidence that Respondent offered the domains for sale to Complainant. An offer to sell a disputed domain name can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”).
Second, the fame of the GOOGLE Mark, which was adopted by Complainant far in advance of the Respondent’s registration of the disputed domain names, renders it wholly implausible that Respondent created the disputed domain names independently. Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the GOOGLE Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). As noted above, the GOOGLE Mark is widely known worldwide. It therefore strains credulity to believe that Respondent had not known of the Complainant or its GOOGLE Mark when registering the disputed domain names. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleadmob.us>, <googleanalytics.us>, <googleblog.us>, <googlechrome.us>, <googledoodle.us>, <googledrive.us>, <googlefit.us>, <googlelens.us>, <googlepay.us>, and <googletrends.us> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: May 4, 2021
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