Google LLC v. Shen Zhen San Ai Wang Luo Ji Shu You Xian Gong Si / Chen Zhi Fei and Shenzhen AAA Network Technology Co., Ltd. / Zhifei Chen
Claim Number: FA2110001971279
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondents are Shen Zhen San Ai Wang Luo Ji Shu You Xian Gong Si / Chen Zhi Fei and Shenzhen AAA Network Technology Co., Ltd. / Zhifei Chen (“Respondents”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googlesz.com> and <iamgoogle.com>, registered respectively with DNSPod, Inc. and NameSilo, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2021. The Forum received payment on October 29, 2021.
On November 1, 2021, DNSPod, Inc. and on November 2, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <googlesz.com> and <iamgoogle.com> domain names are registered respectively with DNSPod, Inc. and NameSilo, LLC and that Respondents are the current registrants of the names. DNSPod, Inc. and NameSilo, LLC have verified that Respondents are bound by the DNSPod, Inc. and NameSilo, LLC registration agreements (the former being in Chinese and the latter in English) and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Chinese, setting a deadline of November 24, 2021 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@googlesz.com and postmaster@iamgoogle.com. Also on November 4, 2021, the Written Notice of the Complaint, in both English and Chinese, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 Respondents.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that, although the format and language of the registrant information varies slightly, it is clear that the domain names are owned by and under common control of the same single registrant: Shenzhen AAA Network Technology Co., Ltd. / Chen Zhi Fei (ZHIFEI CHEN). The registration information shows the same organization name, same effective registrant name (varying slightly based on translation from Chinese characters into English versus original English input), same physical address, and same email address used for both domain names. The only material difference is the use of differing telephone numbers; otherwise, the registration information is effectively the same when compared in English as between the Chinese and English language formulations.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Shen Zhen San Ai Wang Luo Ji Shu You Xian Gong Si / Chen Zhi Fei and Shenzhen AAA Network Technology Co., Ltd. / Zhifei Chen as “Respondent”.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the DNSPod, Inc. registration agreement is in Chinese and the NameSilo, LLC registration agreement is in English. Pursuant to Rule 11(a), the language of the proceeding in relation to the <googlesz.com> domain name shall be Chinese and, in relation to the <iamgoogle.com> domain name, English, unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English because the domain names are owned by and under common control of the same single registrant; one of the registration agreements is in English; both the <googlesz.com> and <iamgoogle.com> domain names are in English; and both resolve to websites with English language content. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant operates one of the most highly recognized Internet search services in the world. Complainant has rights in the GOOGLE mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <googlesz.com> and <iamgoogle.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
Respondent lacks rights or legitimate interests in the <googlesz.com> and <iamgoogle.com> domain names as Respondent is not commonly known by either of the domain names nor did Complainant authorize Respondent to use the GOOGLE mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names. Instead, Respondent makes use of the GOOGLE mark in order to confuse Internet users into thinking that Respondent is associated with Complainant.
Respondent registered the <googlesz.com> and <iamgoogle.com> domain names in bad faith with actual knowledge of Complainant’s rights in the GOOGLE mark through Complainant’s longstanding use and fame of the mark in commerce. Respondent uses the domain names in attempts to pass itself off as Complainant in furtherance of a phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 the domain names should be cancelled or transferred:
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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 as 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 shown that it has rights in the GOOGLE mark through registrations of the mark with the USPTO (e.g. Reg. No. 4123471, registered April 14, 2012, with claimed first use in commerce in January, 2000). The Panel finds Respondent’s <googlesz.com> and <iamgoogle.com> domain names to be confusingly similar to Complainant’s GOOGLE mark since they incorporate the mark in its entirety, adding either the letters “sz” or the phrase “I am”, which do nothing to distinguish the domain names from the mark, along with the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <googlesz.com> and <iamgoogle.com> domain names were registered on January 29, 2015 and August 6, 2015 respectively, several years after Complainant has shown that its GOOGLE mark had become famous. For example, in 2014, the year before the domain names were registered, the GOOGLE brand was ranked No. 2 world-wide in the Interbrand report of “Best Global Brands”.
The domain names currently resolve or previously resolved to websites prominently displaying the GOOGLE mark and mimicking genuine Google Ads websites, apparently in an effort to phish for personal information and/or obtain payments for purported Google Ads related services.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <googlesz.com> and <iamgoogle.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(i) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous GOOGLE mark when Respondent registered the <googlesz.com> and <iamgoogle.com> domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the services promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googlesz.com> and <iamgoogle.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 1, 2021
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