Google LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2109001964713
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <g00glemaps.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2021; the Forum received payment on September 22, 2021.
On September 22, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <g00glemaps.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 September 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@g00glemaps.com. Also on September 24, 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 October 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it is a global company providing Internet based services, with offices throughout North America, Europe, Latin America, Asia Pacific, Africa, and the Middle East, created in 1998 and since then its search engine has become one of the most highly recognized Internet services in the world.
It owns and uses a large portfolio of registrations for the GOOGLE mark including
United States registered trademark GOOGLE, registration number 2884502, registered on the Principal Register on September 14, 2004 for goods in international class 9.
Complainant submits that it uses its GOOGLE marks to provide a wide range of goods and services in addition to its core search engine services including the famous GOOGLE MAPS service, which offers satellite imagery, aerial photography, street maps, 360° interactive panoramic views of streets, real-time traffic conditions, and route planning. As of 2020, GOOGLE MAPS was being used by over 1 billion people every month around the world.
The disputed domain name which was registered on January 21, 2019 is confusingly similar to its GOOGLE mark as it incorporates the mark in its entirety and is an obvious and almost imperceptible misspelling of the GOOGLE mark.
Complainant submits that Respondent’s use of its famous and distinctive GOOGLE mark in the disputed domain name is likely to create consumer confusion as to the source of the services promoted at Respondent’s website. Google Inc. v. Gillespie, FA1203001434643 (Forum May 10, 2012) (concluding that the domain names “googlelivejournal.com” “googlechiefs.com” and “googlepoland.com”, among many others, confusingly similar to Complainant’s GOOGLE Mark where the registrant incorporated non-distinctive generic and/or geographic terms to the GOOGLE Mark and ordering transfer of such domain names to Complainant.).
Complainant asserts that Respondent is not licensed or otherwise authorized to use the GOOGLE trademark and submits that unlicensed, unauthorized use of a third party trademark in a domain is strong evidence that Respondent has no rights or legitimate interest in the domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA0709001076561 (Oct. 26, 2007).
Complainant contends that Respondent’s actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name. To the contrary, Complainant alleges that Respondent is a well-known cybersquatter and using Google’s famous name and mark in a domain name and in connection with a commercial website to confuse and deceive consumers. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
It is submitted that previous panels have held that, as in the present case, there can be no right or legitimate interests under Policy ¶ 4(c)(i) when a respondent was on notice that a complainant possesses strong trademark rights in a mark identical or similar to the disputed domain name. See Belo Corp. v. George Latimer, D2002-0329 (WIPO May 16, 2002) (finding that registration of “providencejournal.com” demonstrated that respondent had notice of complainant’s strong trademark rights in THE PROVIDENCE JOURNAL and PROVIDENCE JOURNAL).
Complainant alleges that that Respondent registered and is using the disputed domain name in bad faith.
Complainant contends that the fame and distinctive qualities of the GOOGLE and GOOGLE MAPS trademarks render it wholly implausible that Respondent independently and innocently registered the disputed domain name and adds that Respondent’s willful intent to violate Google’s intellectual property rights is exhibited by Respondent’s registration and use of a misspelling of GOOGLE MAPS to create a nearly identical imitation of Google’s name, mark and domain name “googlemaps.com”. See, e.g., The J. Jill Group, Inc. v. Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (Forum July 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”).
It is thus clear that Respondent intentionally registered the disputed domain name to improperly exploit the value of the famous GOOGLE and GOOGLE MAPS trademarks, rather than for some legitimate reason.
Complainant adds that upon information and belief, the site generates revenue for Respondent each time a confused consumer visits the site and clicks on a link which in the circumstances of this proceeding constitutes use of the disputed domain name in bad faith. See The Toronto-Dominion Bank v. GEORGE WASHERE, FA1785311 (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).”).
Complainant adds that Respondent is a notorious cybersquatter that has lost more than 100 UDRP cases. Among the many cases holding that Respondent registered and used domain names in bad faith is Amazon Technologies, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1811001819070 (Forum Dec. 27, 2018), where the panel ordered the transfer of “amaz0n.com”. As in the current case, Respondent registered the domain name at issue substituting a zero for the letter “O”.
Other examples of cases brought under the Policy that Respondent has lost in just in the past few months are Coinbase Inc. (Claim Number: FA2108001959170, Sept. 17, 2021); Transamerica Corporation (FA2107001957425, August 30, 2021); Morgan Stanley (FA2104001940479, May 17, 2021); and State Farm Insurance (FA2101001927946, February 8, 2021).
Complainant submits that these previous UDRP decisions show a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA1122600 (Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a global company providing Internet based services, with offices throughout North America, Europe, Latin America, Asia Pacific, Africa, and the Middle East, created in 1998 and since then its search engine has become one of the most highly recognized Internet services in the world.
Complainant owns and uses a large portfolio of registrations for the GOOGLE mark including United States registered trademark GOOGLE, registration number 2884502, registered on the Principal Register on September 14, 2004 for goods in international class 9.
In addition to its famous search engine, Complainant uses its GOOGLE marks to provide a wide range of goods and services in addition to its core search engine services including the famous GOOGLE MAPS service.
The disputed domain name was registered on January 21, 2019 and resolves to a website with links to third party websites.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request from the Forum for details of the registration of the disputed domain name in the course of this proceeding.
Respondent, who is the registrant of the disputed domain name, has availed of a privacy service to conceal her identity on the published WhoIs and was identified by the Registrar in the course of this proceedings. Respondent has been the unsuccessful respondent in numerous proceedings under the Policy as particularized below.
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 provided clear and convincing evidence of its rights in the GOOGLE mark established through its ownership of the portfolio of trademark registrations described above and extensive use of the mark in connection with its world famous search engine and other Internet based services including GOOGLE MAPS in which it has established an extensive reputation and protectable goodwill.
The disputed domain name is confusingly similar to Complainant’s GOOGLE mark and almost identical to the GOOGLE MAPS mark in which Complainant has established rights at common law.
Both the GOOGLE and GOOGLE MAPS marks are clearly recognizable in the disputed domain name <g00glemaps.com> which merely substitutes the letters “oo” with the Arabic numerals “00”.
In the circumstances of this proceeding the gTLD extension may be ignored for the purposes of comparison as it would be considered by Internet users to be a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the GOOGLE and GOOGLE MAPS marks in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that
· Respondent, Carolina Rodrigues / Fundacion Comercio Electronico, is not known as GOOGLE or GOOGLE MAPS;
· Respondent is not licensed or otherwise authorized to use the GOOGLE trademark;
· The screen capture of the website to which the disputed domain name resolves which has been adduced in evidence in an annex to the Complaint illustrates that Respondent is using the disputed domain name to redirect to a pay-per-click site with references to GOOGLE, GOOGLE MAPS and related services;
· Respondent’s actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name;
· Respondent is a well-known cybersquatter and using Google’s famous name and mark in a domain name and in connection with a commercial website to confuse and deceive consumers.
It is well established that when a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue the burden of production shifts to the Respondent to prove such rights or interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
GOOGLE and GOOGLE MAPS are world famous trademarks and it is improbable that the registrant of the disputed domain name was unaware of Complainant, its search engine and its GOOGLE MAPS service when the disputed domain name was registered.
The disputed domain name is clearly an intentional misspelling of GOOGLE MAPS and this Panel finds that it is implausible that the disputed domain name was registered for any reason other than as an exercise in typosquatting to confuse Internet users by taking predatory advantage of Complainant’s reputation and goodwill.
The use to which Respondent has put the disputed domain name as that address of a website clearly intending to attract, misdirect and divert Internet traffic seeking Complainant’s services to Respondent’s website so that Respondent could profit from pay-per-click revenue generated by confused visitors to her site.
The evidence adduced in the annex to the Complaint shows that the links on the website to which the disputed domain name resolves include not only “Googlemap” and “Map Data Google” but also “Sextortion Mail”, “Gis Maps” and “Gis Map”.
Furthermore the previous decisions cited by Complainant in which Respondent was an unsuccessful respondent in proceedings under the Policy show that Respondent is engaging in a pattern of bad faith registrations.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and Complainant has succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to be granted the remedy sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <g00glemaps.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 25, 2021
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