Google LLC v. Nanci Nette
Claim Number: FA2111001971863
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Nanci Nette (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--goole-b2a.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 3, 2021; the Forum received payment on November 3, 2021.
On November 4, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <xn--goole-b2a.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 November 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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--goole-b2a.com. Also on November 8, 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 December 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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: INTERNATIONALIZED DOMAIN NAME
The domain name in dispute, <gooģle.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--goole-b2a.com>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of an IDN are encoded into PUNYCODE. For Complainant to properly display the <gooģle.com> domain name, it first had to encode it into the <xn--goole-b2a.com> domain name.
Past panels have found IDNs and their PUNYCODE translations to be equivalent. 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). The Panel likewise finds that the <gooģle.com> domain name is the same as its PUNYCODE translation, <xn--goole-b2a.com>, for purposes of this proceeding.
A. Complainant
1. Respondent’s <xn--goole-b2a.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
2. Respondent does not have any rights or legitimate interests in the <xn--goole-b2a.com> domain name.
3. Respondent registered and uses the <xn--goole-b2a.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Google LLC, is the well-known search engine provider. Complainant holds a registration for the GOOGLE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 2,884,502, registered Sep. 14, 2004).
Respondent registered the <xn--goole-b2a.com> (translated from punycode as <gooģle.com>) domain name on Dec. 5, 2018, and uses it to host parked 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 Panel finds Complainant has rights in the GOOGLE mark through its registration with the USPTO. See Spotify AB v. Olodo Glory / Sutherland, FA 2106001951577 (Forum July 15, 2021) (“Complainant’s registration of the SPOTIFY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i).”).
Respondent’s <xn--goole-b2a.com> domain name (translated from punycode as <gooģle.com>) incorporates Complainant’s GOOGLE mark and replaces the second “g” with the “ģ” unicode character, and adds the “.com” gTLD. Swapping out a character and adding a gTLD does not distinguish a domain name from the mark it incorporates. 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”). Therefore, the Panel finds that Respondent’s <xn--goole-b2a.com> domain name is confusingly similar to Complainant’s GOOGLE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name. Complainant has not authorized Respondent to use its GOOGLE mark. The WHOIS of record identifies Respondent as “Nanci Nette.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.)
Complainant argues that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host parked pay-per-click links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the disputed domain name’s resolving website, which features various pay-per-click links. Therefore, the Panel finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has exhibited a pattern of bad faith registration and use. Under Policy ¶ 4(b)(ii), where a Respondent has a demonstrated history of adverse UDRP proceedings against it, past panels have found a pattern of bad faith. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Complainant provides a list of previous adverse UDRP rulings against Respondent. Therefore, the Panel finds that Respondent has a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the disputed domain name in bad faith to host parked pay-per-click links. The Panel agrees and finds bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GOOGLE mark. The Panel agrees, noting the fame of the GOOGLE mark, and finds that Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the GOOGLE mark under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
The Panel finds that 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--goole-b2a.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 6, 2021
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