Google LLC v. Eduardo García M.
Claim Number: FA2108001960975
Complainant is Google LLC (“Complainant”), represented by Vicki Nee of Perkins Coie LLP, District of Columbia, USA. Respondent is Eduardo García M. (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google360streetview.com>, registered with Soluciones Corporativas IP, SL.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2021; the Forum received payment on August 24, 2021. The Complaint was received in English and Spanish
On August 25, 2021, Soluciones Corporativas IP, SL confirmed by e-mail to the Forum that the <google360streetview.com> domain name is registered with Soluciones Corporativas IP, SL and that Respondent is the current registrant of the name. Soluciones Corporativas IP, SL has verified that Respondent is bound by the Soluciones Corporativas IP, SL 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 August 30, 2021, the Forum served the Spanish language Complaint and all Annexes, including a Spanish and English language Written Notice of the Complaint, setting a deadline of September 20, 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@google360streetview.com. Also on August 30, 2021, the Spanish and English language 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 September 22, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement for the disputed domain name is written in Spanish, thereby making the language of the proceedings also to be Spanish.
However, pursuant to Rule 11(a), the Panel has a discretion to determine that the language of the proceeding should be a different and more appropriate language, having regard to all the circumstances. The Panel has considered the evidence and submissions of the Complainant on this matter and, taking them all into account, determines that the language requirement has been satisfied through the service of the Spanish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant has rights in the GOOGLE and STREET VIEW marks through Complainant’s registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered September 14, 2004 [GOOGLE] and Reg. No. 4,382,267, registered August 13, 2013 [STREET VIEW]). See Compl. Exhibit F. Respondent’s <google360streetview.com> domain name is nearly identical and confusingly similar to Complainant’s GOOGLE and STREET VIEW marks because it contains both marks and merely adds the descriptive term, “360” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <google360streetview.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the GOOGLE and STREET VIEW marks. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses it to redirect to Complainant’s genuine website.
Respondent registered and uses the <google360streetview.com> domain name in bad faith as Respondent uses it to redirect to Complainant’s genuine website. Respondent also registered the disputed domain name using a privacy shield. Finally, Respondent had actual knowledge of Complainant’s rights to the GOOGLE and STREET VIEW marks prior to registering the disputed domain name, evidenced by the fame of Complainant’s GOOGLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company whose Google search engine has become one of the most highly recognized Internet search services in the world.
2. Complainant has established its trademark rights in the GOOGLE and STREET VIEW marks through Complainant’s registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered September 14, 2004 [GOOGLE] and Reg. No. 4,382,267, registered August 13, 2013 [STREET VIEW]).
3. Respondent registered the <google360streetview.com> domain name on April 29, 2021.
4. Respondent has not used the disputed domain name for a legitimate website but has caused it to redirect to Complainant’s own genuine website.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Respondent submits that it has rights in the GOOGLE and STREET VIEW marks through its registration of the marks with the USPTO (e.g. Reg. No. 2,884,502, registered September 14, 2004 [GOOGLE] and Reg. No. 4,382,267, registered August 13, 2013 [STREET VIEW]). See Compl. Exhibit F. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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.”). Therefore, the Panel finds Complainant has demonstrated rights in the GOOGLE and STREET VIEW marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GOOGLE and STREET VIEW marks. Complainant argues Respondent’s <google360streetview.com> domain name is confusingly similar to Complainant’s GOOGLE and STREET VIEW marks because it contains both marks and merely adds the descriptive term, “360” and the generic top-level domain (“gTLD”) “.com.” Adding a descriptive term and a gTLD to a complainant’s mark fails to distinguish a disputed domain name sufficiently from the mark per Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GOOGLE and STREET VIEW marks and to use them in its domain name;
(b) Respondent registered the <google360streetview.com> domain name on April 29, 2021;
(c) Respondent has used the domain name to redirect to Complainant’s genuine website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <google360streetview.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the GOOGLE and STREET VIEW marks. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Eduardo García M,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the GOOGLE and STREET VIEW marks. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <google360streetview.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to redirect to Complainant’s genuine website. Using a disputed domain name to direct to a complainant’s own website 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 Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Here, Complainant provides screenshots showing the disputed domain name is inactive and automatically redirects to Complainant’s genuine website. See Compl. Exhibit G. Therefore, the Panel 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
The Panel finds that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel therefore finds Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <google360streetview.com> domain name in bad faith because Respondent uses it to redirect to Complainant’s genuine website and Respondent registered it using a privacy shield. Registering a disputed domain name using a privacy shield and using it to redirect to a complainant’s website can demonstrate bad faith per Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, Complainant provides screenshots showing the disputed domain name is inactive and automatically redirects to Complainant’s genuine website. See Compl. Exhibit G. Complainant also argues Respondent registered the disputed domain name using a privacy shield. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Secondly, Complainant contends that Respondent registered the <google360streetview.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the GOOGLE and STREET VIEW marks prior to registering the disputed domain name, evidenced by the fame of Complainant’s marks. Substantial fame of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant highlights that past UDRP cases have established the fame of Complainant mark. See e.g., Google LLC v. Floan Delveir, FA2012001925079 (Forum Jan. 21, 2021). Therefore, the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GOOGLE and STREET VIEW marks and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <google360streetview.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 23, 2021
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