Google LLC v. Host Master / Transure Enterprise Ltd
Claim Number: FA2104001943352
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xn--yotbe-lvab.com>, <youtube-nocookie.co>, <youtube2mp3.mobi>, <genyoutube.co>, <googkle.co>, <googlescholar.co>, <googlwe.co>, <adoogle.org>, <goiogle.co>, <gmail-login.biz> and <gmailm.co> (collectively “Domain Names”), registered with Above.Com Pty Ltd..
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2021; the Forum received payment on April 29, 2021.
On May 4, 2021; May 12, 2021, Above.Com Pty Ltd. confirmed by e-mail to the Forum that the <xn--yotbe-lvab.com>, <youtube-nocookie.co>, <youtube2mp3.mobi>, <genyoutube.co>, <googkle.co>, <googlescholar.co>, <googlwe.co>, <adoogle.org>, <goiogle.co>, <gmail-login.biz> and <gmailm.co> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 May 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@xn--yotbe-lvab.com, postmaster@youtube-nocookie.co, postmaster@youtube2mp3.mobi, postmaster@genyoutube.co, postmaster@googkle.co, postmaster@googlescholar.co, postmaster@googlwe.co, postmaster@adoogle.org, postmaster@goiogle.co, postmaster@gmail-login.biz, postmaster@gmailm.co. Also on May 14, 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 June 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 is a Delaware limited liability company located in Mountain View, California, and the owner of the trademarks YOUTUBE, GOOGLE and GMAIL. It operates one of the most well-known search engines (under the GOOGLE mark), e-mail services (under the GMAIL mark) and video sharing sites (under the YOUTUBE mark). Complainant has rights in the YOUTUBE, GOOGLE and GMAIL marks through Complainant’s registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,711,233, registered November 17, 2009 [YOUTUBE], Reg. No. 2,884,502, registered September 14, 2002 [GOOGLE] and Reg. No. 3,353,237, registered December 11, 2007 [GMAIL]). Complainant also has rights in the GOOGLE ADS and GOOGLE SCHOLAR marks through Complainant’s use and registrations for these marks.
Respondent’s <xn--yotbe-lvab.com> domain name is nearly identical to Complainant’s YOUTUBE mark as the domain name translates into <yoütübe.com>, and therefore fully incorporates Complainant’s YOUTUBE mark. Respondent’s <youtube-nocookie.co>, <youtube2mp3.mobi> and <genyoutube.co> domain names are confusingly similar to Complainant’s YOUTUBE mark as they incorporate the YOUTUBE mark in its entirety with additional words and letters. Respondent’s <googkle.co>, <googlwe.co> and <goiogle.co> domain names are confusingly similar to Complainant’s GOOGLE mark as they are misspellings of Complainant’s GOOGLE mark. Respondent’s <googlescholar.co> domain name is confusingly similar to Complainant’s GOOGLE SCHOLAR mark as it infringes the GOOGLE SCHOLAR mark. Respondent’s <adoogle.org> domain name is confusingly similar to Complainant’s GOOGLE ADS mark as it refers to Complainant’s advertising services and infringes the GOOGLE ADS mark. Respondent’s <gmail-login.biz> and <gmailm.co> domain names are confusingly similar to Complainant’s GMAIL mark as they infringe Complainant’s GMAIL mark.
Respondent lacks rights or legitimate interests in the <xn--yotbe-lvab.com>, <youtube-nocookie.co>, <youtube2mp3.mobi>, <genyoutube.co>, <googkle.co>, <googlescholar.co>, <googlwe.co>, <adoogle.org>, <goiogle.co>, <gmail-login.biz> and <gmailm.co> domain names. Respondent is not commonly known by the Domain Names nor has Respondent been authorized by Complainant to use any of Complainant’s marks. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services as Respondent uses them in connection with commercial websites and to load malicious software on consumers’ computers and devices. Additionally, Respondent offers to sell the <xn--yotbe-lvab.com> domain name.
Respondent registered and uses the <xn--yotbe-lvab.com>, <youtube-nocookie.co>, <youtube2mp3.mobi>, <genyoutube.co>, <googkle.co>, <googlescholar.co>, <googlwe.co>, <adoogle.org>, <goiogle.co>, <gmail-login.biz> and <gmailm.co> domain names in bad faith. Respondent has a pattern of bad faith registration and offers the <xn--yotbe-lvab.com> domain name for sale. Respondent also uses the Domain Names in connection with commercial websites. Finally, Respondent registered the Domain Names using a privacy service and uses some of them to distribute malicious software.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the YOUTUBE, GOOGLE and GMAIL marks. Each of the Domain Names is confusingly similar to one of Complainant’s YOUTUBE, GOOGLE and GMAIL marks. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the 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 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 rights in the GOOGLE, YOUTUBE and GMAIL marks based upon registration of the marks with the USPTO (e.g. Reg. No. 3,711,233, registered November 17, 2009 [YOUTUBE], Reg. No. 2,884,502, registered September 14, 2002 [GOOGLE] and Reg. No. 3,353,237, registered December 11, 2007 [GMAIL]). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).
The Panel finds that each of the Domain Names is confusingly similar to either the GOOGLE, YOUTUBE or GMAIL marks. The specific domain names are addressed below.
The <youtube-nocookie.co>, <youtube2mp3.mobi> and <genyoutube.co> domain names are confusingly similar to Complainant’s YOUTUBE mark as they incorporate the YOUTUBE mark in its entirety with additional words and letters. The <googlescholar.co> domain name is confusingly similar to Complainant’s GOOGLE mark as it incorporates the GOOGLE mark in its entirety with an additional words. The <gmail-login.biz> and <gmailm.co> domain names are confusingly similar to Complainant’s GMAIL mark as they incorporate the GMAIL mark in its entirety with additional words or letters. Adding generic words, letters, and a top-level-domain to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The <adoogle.org>, <googkle.co>, <googlwe.co> and <goiogle.co> domain names are confusingly similar to Complainant’s GOOGLE mark as they are misspellings of Complainant’s GOOGLE mark. Adding a gTLD to a misspelled mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”).
The <xn--yotbe-lvab.com> domain name is confusingly similar to Complainant’s YOUTUBE mark as it uses “Punycode” to create a domain name that reads as <yoütübe.com> which is virtually identical to the YOUTUBE Mark, adding only umlauts above the letters “u”. A Punycode iteration of an IDN may be confusingly similar to a mark per Policy ¶ 4(a)(i). See Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010) (finding <bıng.com> [xn--bng-jua.com] confusingly similar to BING and noting, “The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶ 4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the GOOGLE, YOUTUBE or GMAIL marks. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Host Master / Transure Enterprise Ltd” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names either resolve to websites featuring pay-per-click links to third party websites which purport to offer competing services, websites offering the Domain Names for sale or fraudulent websites that appear on their face to deliver malware. Such uses are not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”); see also Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of each of the Domain Names between 2016 and 2021, Respondent had actual knowledge of Complainant’s YOUTUBE, GOOGLE and GMAIL marks. The Panel reaches this conclusion based on the ubiquity of the YOUTUBE, GOOGLE and GMAIL marks and the use of a number of the Domain Names to resolve to websites that contain pay-per-click links that are in respect of Complainant’s business. Furthermore it is improbable that a party would register 11 domain names that wholly incorporate Complainant’s YOUTUBE, GOOGLE and GMAIL mark in the absence of any awareness of these marks. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s YOUTUBE, GOOGLE and GMAIL marks for commercial gain by using the confusingly similar Domain Names to resolve to websites containing either advertisements and links to third party websites for commercial gain, offers to sell the relevant domain name or malware. Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The same is the case for the use of a confusingly similar domain name to distribute malware. See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). Finally offering a disputed domain name for sale can demonstrate bad faith per Policy ¶ 4(b)(i). Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”).
The Panel finds Complainant has 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 <xn--yotbe-lvab.com>, <youtube-nocookie.co>, <youtube2mp3.mobi>, <genyoutube.co>, <googkle.co>, <googlescholar.co>, <googlwe.co>, <adoogle.org>, <goiogle.co>, <gmail-login.biz> and <gmailm.co> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: June 9, 2021
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