Google LLC v. Bradley M / Bradley Mancini / Marketing Channel, Inc.
Claim Number: FA2104001941992
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Bradley M / Bradley Mancini / Marketing Channel, Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com>, registered with NameCheap, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2021; the Forum received payment on April 19, 2021.
On April 19, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@adwords-cs.com, postmaster@adwords-help.com, postmaster@adwords-techsupport.com. Also on April 27, 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 May 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 created the AdWords online advertising platform in 2000. Complainant has rights in the ADWORDS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,309,828, registered March 26, 2013). Respondent’s <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names are confusingly similar to Complainant’s ADWORDS mark as they merely add descriptive terms associated with products and services offered by Complainant under its AdWords platform and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the ADWORDS mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the <adwords-cs.com> domain name to automatically redirect to Complainant’s official advertising platform, while the <adwords-help.com> and <adwords-techsupport.com> domain names are inactive. Additionally, Respondent uses the <adwords-cs.com> domain name to pass off as Complainant in an email phishing scheme.
Respondent registered and uses the <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names in bad faith. Respondent has a history of bad faith registration. Additionally, Respondent uses the <adwords-cs.com> domain name to pass off as Complainant in an email scheme. Finally, Respondent had actual knowledge of Complainant’s rights in the ADWORDS mark prior to registering the disputed domain names based on Respondent’s passing off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google LLC (“Complainant”), of Mountain View, CA, USA. Complainant was established in 1997 and has offered a broad array of technological products and services since that time under its GOOGLE mark. Google is also the owner of numerous domestic and international registrations for the mark ADWORDS and variations thereon constituting the family of ADWORDS marks. Since 2000 Google has continuously used its ADWORDS mark in connection with its online keyword search and advertising service.
Respondent is Bradley M/Bradley Mancini-Marketing Channel, Inc. (“Respondent”), of Toronto, Canada. Respondent’s registrar’s address is listed as Phoenix, AZ, USA. The Panel notes that the <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names were registered on or about February 14, 2021, March 2, 2021, and March 10, 2021, respectively.
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 ADWORDS mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 4,309,828, registered March 26, 2013). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds Complainant has demonstrated rights in the ADWORDS mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names are confusingly similar to Complainant’s ADWORDS mark as they merely add descriptive terms and the gTLD “.com.” The addition of descriptive terms, a hyphen, and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) (finding the <morgan-stanley.xyz> domain name identical to complainant’s MORGAN STANLEY mark, because “the use of a hyphen and addition of a gTLD are irrelevant in determining the identical or confusingly similar nature of a disputed domain name under Policy ¶ 4(a)(i).”). The Panel here finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed to Respondent any rights in the ADWORDS mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrants as “Bradley M / Bradley Mancini / Marketing Channel, Inc.” and there is no evidence to contradict Complainant’s contention that Respondent has never been authorized to use the ADWORDS mark. The Panel here finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the <adwords-cs.com> domain name redirects to Complainant’s official advertising platform website while the adwords-help.com> and <adwords-techsupport.com> domain names fail to resolve to active websites. Furthermore, Respondent uses the <adwords-cs.com> domain name to pass off as Complainant in an email phishing scheme, and Respondent can do the same using the <adwords-help.com> and <adwords-techsupport.com> domain names. Using a disputed domain name to redirect to a complainant’s official website or failing to make active use of a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); see also Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Additionally, passing off as a complainant through emails also may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Here, Complainant provides a screenshot showing the <adwords-cs.com> domain name automatically redirects to Complainant’s official advertising platform website. Complainant also provides screenshots showing the <adwords-help.com> and <adwords-techsupport.com> fail to resolve to active websites. Complainant additionally provides evidence that Respondent uses the <adwords-cs.com> domain name in an email scheme to pass off as an employee of Complainant to compel users into purchasing Respondent’s software. Complainant also highlights that the remaining domain names have active mail servers set up, so Respondent can expand its schemes using email addresses generated from these domain names. The Panel here finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant contends Respondent registered and uses the <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names in bad faith as Respondent uses the <adwords-cs.com> domain name to pass off as Complainant’s employees through an email scheme. Using a disputed domain name to pass off as a complainant’s employees can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Here, Complainant provides screenshots showing Respondent uses the <adwords-cs.com> domain name in an email scheme to pass off as an employee of Complainant to compel users to purchase Respondent’s software. Complainant also highlights that the remaining domain names have active mail servers set up, so Respondent can expand its schemes using email addresses generated from these domain names. The Panel here finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends Respondent registered the <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names in bad faith as Respondent had actual knowledge of Complainant’s rights to the ADWORDS mark prior to registering the disputed domain names based on Respondent passing off as Complainant. Passing off as a complainant can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here Complainant provides screenshots showing Respondent uses the <adwords-cs.com> domain name in an email scheme to pass off as an employee of Complainant to direct users into purchasing Respondent’s software. The Panel here finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <adwords-cs.com>, <adwords-help.com>, and <adwords-techsupport.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 7, 2021
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