Google LLC v. Jiri Capcuch
Claim Number: FA2111001972064
Complainant is Google LLC ("Complainant"), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Jiri Capcuch ("Respondent"), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xn--gmal-7w5a.com>, <youaregoogle.com>, and <7youtube.com>, registered with Dynadot, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 4, 2021; the Forum received payment on November 4, 2021.
On November 5, 2021; November 9, 2021, Dynadot, LLC confirmed by email to the Forum that the <xn--gmal-7w5a.com>, <youaregoogle.com>, and <7youtube.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@xn--gmal-7w5a.com, postmaster@youaregoogle.com, postmaster@7youtube.com. Also on November 10, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant offers a variety of online products and services under trademarks that include GMAIL, GOOGLE, and YOUTUBE. Complainant's GOOGLE website has been recognized as one of the most popular destinations on the Internet for many years, and GOOGLE has been ranked as the most valuable brand in the world. Complainant has provided email and electronic messaging services under the GMAIL mark since 2004, and has more than 1.5 billion users. Complainant's YOUTUBE video sharing service dates back to 2005. It was ranked as the fastest growing website for the first half of 2006, at which time it had a monthly unique audience of 19.6 million; it is currently the second most viewed website in the world. Complainant owns United States trademark registrations for GMAIL, GOOGLE, and YOUTUBE in standard character form, and asserts that these marks have become famous internationally, as recognized in previous proceedings under the Policy.
The disputed domain name <7youtube.com> was registered in September 2009; the domain name <xn--gmal-7w5a.com> was registered in January 2021; and the domain name <youaregoogle.com> was registered in April 2021. (The domain name <xn--gmal-7w5a.com> is an internationalized domain name (IDN) rendered in ASCII characters using Punycode; its Unicode equivalent is <gmaịl.com>.) The domain names were registered in the name of a privacy registration service prior to the commencement of this proceeding, at which time the privacy shield was removed, revealing Respondent as the registrant of the domain names.
The domain name <xn--gmal-7w5a.com> is listed for sale at a domain name marketplace. All three of the disputed domain names are being used to display pay-per-click links and in some instances to prompt users to download potentially malicious software. Complainant states Respondent is not commonly known by the disputed domain names and is not authorized or licensed to use any of Complainant's marks. Complainant asserts further that Respondent "is a notorious and prolific recidivist cybersquatter and has lost many UDRP cases," including one that involved domain names corresponding to typographical variations on Complainant's GMAIL and GOOGLE marks. See Google LLC v. Jiri Capcuch, FA 1926089 (Forum Jan. 25, 2021) (ordering transfer of <xn--gmil-6na.com> [<gmáil.com>] and <xn--gogle-uta.com> [<gòogle.com>]).
Complainant contends on the above grounds that the disputed domain names <xn--gmal-7w5a.com>, <youaregoogle.com>, and <7youtube.com> are confusingly similar to its GMAIL, GOOGLE, and YOUTUBE marks; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <xn--gmal-7w5a.com>, the Punycode equivalent of <gmaịl.com>, corresponds to Complainant's registered GMAIL trademark, substituting the Unicode character "ị" (U+1ECB, Latin Small Letter i with Dot Below) for the "i" and appending the ".com" top-level domain. The disputed domain name <youaregoogle.com> incorporates Complainant's registered GOOGLE mark, preceded by the generic terms "you" and "are" and followed by the ".com" top-level domain. The disputed domain name <7youtube.com> incorporates Complainant's registered YOUTUBE mark, adding a numeral "7" and the ".com" top-level domain. These additions and substitution do not substantially diminish the similarity between the domain names and Complainant's marks. See, e.g., Google LLC v. Jiri Capcuch, FA 1926089, supra (finding <xn--gmil-6na.com> [<gmáil.com>] and <xn--gogle-uta.com> [<gòogle.com>] confusingly similar to GMAIL and GOOGLE); Google LLC v. Mingde wang, FA 1937336 (Forum Apr. 16, 2021) (finding <xn--outube-9ya.com> [<ýoutube.com>] confusingly similar to YOUTUBE); Webster Financial Corp. & Webster Bank, NA v. DOMAIN PRIVACY SERVICE FBO REGISTRANT, FA 1765708 (Forum Feb. 5, 2018) (finding <wearewebster.com> confusingly similar to WEBSTER); WYNN Resorts Holdings, LLC v. Dajin Zhang, D2019-1713 (WIPO Sept. 10, 2019) (finding <7wynn.com> confusingly similar to WYNN). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
Each of the disputed domain names incorporates one of Complainant's registered marks without authorization. They are being used to attract users seeking Complainant's marks for the purpose of promoting competing or unrelated products or services or disseminating malware. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Laboratory Corp. of America Holdings v. Domain Administrator / Fundacion Privacy Services LTD, FA 1931836 (Forum Mar. 23, 2021) (finding lack of rights or interests in similar circumstances); Google LLC v. Jiri Capcuch, FA 1926089, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(ii), bad faith may be shown by evidence that the domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register three domain names corresponding to Complainant's famous marks, adding generic terms or introducing typographical errors. Respondent is using the domain names to profit from confusion with Complainant's marks by promoting competing or unrelated products or services or disseminating malware, and in at least one instance offering one of the domain names for sale. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Laboratory Corp. of America Holdings v. Domain Administrator / Fundacion Privacy Services LTD, supra (finding bad faith in similar circumstances); Google LLC v. Jiri Capcuch, FA 1926089, supra (same). The Panel also notes Respondent's history of similar behavior involving well-known marks owned by Complainant and others. See, e.g., Google LLC v. Jiri Capcuch, FA 1926089, supra (finding bad faith registration of domain names corresponding to Complainant's GMAIL and GOOGLE marks); Gap Inc. & Its Subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA 1562139 (Forum July 2, 2014) (finding bad faith registration of <oldnavvy.com>, and finding a pattern of cybersquatting by Respondent based upon adverse prior UDRP determinations). The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--gmal-7w5a.com>, <youaregoogle.com>, and <7youtube.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 6, 2021
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