Google LLC v. Elite Domains / Elite Domains LLC
Claim Number: FA2106001951174
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Elite Domains / Elite Domains LLC (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--oogle-71a.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2021; the Forum received payment on June 15, 2021.
On June 16, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <xn--oogle-71a.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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--oogle-71a.com. Also on June 17, 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 July 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
The domain name in dispute is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--oogle-71a.com>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters, here <ģoogle.com>. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. To display the characters properly in the <ģoogle.com> domain name, it first had to encode it into the <xn--oogle-71a.com> domain name.
IDNs and their PUNYCODE translations are equivalent under the Policy. 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). Therefore, the Panel finds that the <ģoogle.com> domain name is the same as its PUNYCODE translation, <xn--oogle-71a.com>, for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Since the GOOGLE name was created in 1997, the GOOGLE search engine has become one of the most highly recognized and widely used Internet search services in the world.
Complainant has rights in the GOOGLE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <xn--oogle-71a.com> domain name is identical to Complainant’s GOOGLE mark as the domain name translates to <ģoogle.com> and therefore contains the entire GOOGLE mark with a stylized letter -- “ģ” instead of “g.”
Respondent lacks rights or legitimate interests in the <xn--oogle-71a.com> domain name. Respondent is not commonly known by the at-issue domain name nor has Respondent been authorized by Complainant to use the GOOGLE mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses it in connection with pay-per-click websites. Respondent also further lacks rights or legitimate interests in the domain name as Respondent offers it for sale.
Respondent registered and uses the <xn--oogle-71a.com> domain name in bad faith. Respondent has a history of bad faith registrations. Respondent also offers the at-issue domain name for sale. Additionally, Respondent uses the domain name in connection with pay-per-click websites. Furthermore, Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registering the <xn--oogle-71a.com> domain name because Complainant’s mark is famous. Finally, Respondent registered the disputed domain name using a privacy shield.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in GOOGLE.
Complainant’s rights in GOOGLE existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <xn--oogle-71a.com> / [<ģoogle.com>] domain name to offer the domain name for sale and to host pay-per-click links.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the GOOGLE mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <xn--oogle-71a.com> is identical to Complainant’s GOOGLE mark as it translates to <ģoogle.com>. The <xn--oogle-71a.com> domain name is identical or confusingly similar to Complainant’s trademark because it wholly incorporates Complainant’s GOOGLE mark, merely using PUNYCODE to translate the mark, adding an accent to the trademark’s letter “g,” and appending the “.com” gTLD. Respondent’s addition of an accent and necessary gTLD fails to distinguish the at-issue domain name from Complainant’s trademark under 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”).
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. 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”).
Respondent lacks both rights and legitimate interests in respect of the <xn--oogle-71a.com> domain name. Respondent is not authorized to use Complainant’s GOOGLE trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. 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 at-issue domain name identifies the domain name’s registrant as “Elite Domains.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <xn--oogle-71a.com> domain name or by the GOOGLE trademark. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore and as mentioned below regarding bad faith, the <xn--oogle-71a.com> domain name is used to host pay-per-click links. Respondent’s use of the at-issue domain name in this manner fails to indicate any bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) of the <xn--oogle-71a.com> domain name. See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <xn--oogle-71a.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent offers the at-issue domain name for sale on a webpage addressed by the domain name for an excessive amount. Doing so indicates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(i). See 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).”).
Second, Respondent has suffered multiple adverse UDRP decisions and the record thus discloses Respondent’s pattern of bad faith domain name registration and use. Respondent’s pattern of cybersquatting suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”).
Additionally and as mentioned above regarding rights and legitimate interests, Respondent uses the <xn--oogle-71a.com> domain name to host pay-per-click links some of which reference Complainant and/or competitive services. Such use of the domain name is yet more evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”).
Finally, Respondent registered <xn--oogle-71a.com> knowing that Complainant had trademark rights in the GOOGLE trademark. Respondent’s prior knowledge is evident given the mark’s world fame. Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <xn--oogle-71a.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
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--oogle-71a.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 13, 2021
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