Google LLC v. Brian Strauss / digitalDADA
Claim Number: FA2111001972369
Complainant is Google LLC (“Complainant”), represented by Griffin Barnet of Perkins Coie LLP, District of Columbia, USA. Respondent is Brian Strauss / digitalDADA (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googlepixel.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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2021; the Forum received payment on November 8, 2021.
On November 9, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googlepixel.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 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 e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts and to postmaster@googlepixel.com. Also, on November 10, 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.
A timely Response was received and determined to be complete on November 29, 2021.
On December 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels as Panelist.
A timely “Further Statement” was submitted by Complainant on December 14, 2021.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Google LLC was founded in 1998, and the Google search engine has become one of the most highly recognized Internet search services in the world. Google’s primary website is located at google.com and Google also owns and operates hundreds of additional google-formative domain names.
Google owns numerous registrations for the GOOGLE trademark in the United States and abroad dating back as early as 1999. In 2021, the GOOGLE mark was ranked as the third most valuable brand in the world, with a value of around $191 billion.
Complainant asserts that, in light of its registrations for the GOOGLE mark in jurisdictions around the world, as well as its substantial and exclusive use of such mark, it owns protectible rights in the GOOGLE mark.
Complainant further alleges that the disputed domain name, <googlepixel.com>, is nearly identical or confusingly similar to the GOOGLE mark. Complainant notes that the domain name incorporates the GOOGLE mark in its entirety and contends that the addition of the term “pixel” does not obviate confusing similarity when combined with the full identical GOOGLE mark. Complainant also points out that the addition of the generic top-level domain “.com” in the domain name is immaterial with respect to an analysis of confusing similarity.
Google contends that Respondent has no rights or legitimate interests in the disputed domain name. It observes that Respondent, Brian Strauss/digital DADA, is not named Google or any variation of that name or mark. Google also indicates that it has not authorized or licensed Respondent to use of any of its marks.
Complainant asserts that the disputed domain name, which was registered on May 5, 2009, is not associated with an active website and merely directs to a landing page containing the text “Google pixel” in a stylized font. As such, according to Complainant, Respondent is not making active use of the domain name and is, instead, essentially warehousing a domain. Complainant contends that such use of the domain name does not constitute a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the domain name.
With respect to the issue of “bad faith” registration and use, Complainant argues that “[t]he fame and unique qualities of the GOOGLE Mark, which were adopted and registered by Google well prior to the registration of the Domain Name, demonstrate that Respondent registered the Domain Name in bad faith to benefit from and trade off the goodwill Google had created in its famous name and marks.”
Complainant asserts that the evidence supports an inference that Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registration of the domain name. Such an inference is warranted, according to Complainant, due to the notoriety of the GOOGLE mark and Respondent’s use and registration of the domain name to direct to a landing page bearing the words “Google pixel.”
Complainant also points to the fact that, in 2016, Google, through its corporate domain name registrar, offered to purchase the disputed domain name from Respondent for $500 and that Respondent responded with a counteroffer of $10,000, which Complainant labels as “grossly inflated.” Google maintains that it attempted to negotiate with Respondent in good faith, but Respondent did not provide any further response.
B. Respondent
Respondent is a graphic designer, photographer, and web publishing consultant. He contends that he came up with the idea of a googlepixel in 2010, having worked with megapixel cameras and built gigapixel images and read about imaging on petapixel.com. During a conversation with his office mate, Respondent asked “what would be the next evolution of the lineage? A googlepixel?” Respondent then searched the URL, saw it was vacant and bought the domain name.
Respondent contends that he has not utilized the disputed domain name in any way that violates the Policy. He notes that his domain name registration predates the google pixel screen technology by three years and that Google did not come out with its Googlepixel phone until 2016.
Respondent asserts that he has posted daily images from photoshoots at a <googlepixel.com> url.
“I have many projects, image directories and technological tests in place at Googlepixel.com.”
“This is private work and I do not require it to be on display for the world.”
Respondent indicates that, after being contacted by Google’s corporate domain name registrar regarding the possible sale of the disputed domain name, “I told him I was not interested, and he kept upping the offer.” According to Respondent, “I am not interested in selling my web business URL that my customers utilize to work with my agency. I have an 11-year investment in this URL and a reputation to maintain.”
Respondent further argues that he has not posted “buy this URL” ads or done anything that “would disparage any brand on this public facing side of Googlepixel.com.”
C. Additional Submissions
Complainant, in its “Further Statement,” asserts that Respondent’s claim that he registered the disputed domain name because it “would be the next evolution of the lineage” in digital image file size scale “is not supported by any evidence, is not credible, and reads as a mere ex post facto claim to justify his bad faith cybersquatting activity.”
Complainant further indicates that, in view of Respondent’s prior experience with domain name acquisitions and other transactions, “it defies reason” that Respondent lacked actual knowledge of the well-known GOOGLE trademark.
With respect to Respondent’s contention that he uses or has used the domain name to host public and non-public content related to his business, Complainant points out that the evidence submitted by Respondent to support his contention does not show the full domain name, the date on which the screenshots were captured or the date(s) on which the content were ostensibly made available through the domain name. As such, Complainant contends that the Panel should reject the proffered screenshots as evidence of use of the disputed domain name. Moreover, Complainant asserts, even if the Panel considers the screenshots, “Respondent has no legal right to use Complainant’s well-known GOOGLE mark or any confusingly similar identifiers in connection with an unaffiliated business for commercial gain, including as part of a domain name.”
For the reasons set forth below, the Panel finds that: (1) the disputed domain name, <googlepixel.com>, is confusingly similar to the GOOGLE trademark and that Complainant has rights in such mark; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the domain name was registered and is 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.
The Panel finds that the disputed domain name, <googlepixel.com>, is confusingly similar to the GOOGLE trademark. The domain name incorporates, in full, the GOOGLE mark, adding only descriptive or generic matter.
The evidence further indicates that Complainant, through its use of, and registrations[i] covering, the GOOGLE mark, has rights in such mark.
The Panel finds that Complainant has met its burden of proving that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant asserts that the disputed domain name is not associated with an active website and merely directs to a landing page containing the text “Google pixel” in stylized font. Respondent does not appear to dispute this but asserts that he has posted images at the website and many other directories and websites behind that closed front door. “I have many other projects, image directories and technological tests in place at Googlepixel.com.”
However, as noted by Complainant in its “Further Statement,” any such use by Respondent does not justify Respondent’s decision to include the GOOGLE trademark in his domain name. Even if, as Respondent contends, the disputed domain name registration predates the google pixel technology name by three years and Google did not come out with its Googlepixel phone until 2016, such facts do not excuse Respondent’s use of the GOOGLE mark in its domain name.
There can be no doubt that Respondent, who describes himself as a “graphic designer, photographer and web publishing consultant,” was aware of Complainant and its GOOGLE mark at the time he registered the disputed domain name in 2009. Respondent’s description of the origins of the domain name fully supports such a determination. The evidence indicates that registrations for the GOOGLE trademark were issued many years prior to 2009, based on a date of first use as far back as 1997. And, there can be no dispute that GOOGLE is one of the most well-known marks in the world.
In view of the above, as well as the determination that the disputed domain name is confusingly similar to the GOOGLE mark, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods and services. Further, there is no evidence or argument that Respondent is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the domain name.
The Panel finds that the domain name in dispute was registered and is being used in bad faith.
While Respondent asserts that he “maintain[s] this URL in good faith,” and provides the Panel with the genesis of his adoption of the disputed domain name, for the reasons stated immediately above, it is beyond dispute that Respondent knew of Complainant and its well-known GOOGLE mark at the time he registered the domain name <googlepixel.com>. Where a domain name is “so obviously connected with such a well-known name and products … its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, Case No. D2000-0226. The Panel further notes that the term “pixel,” which appears as part of the disputed domain name, has relevance in the computer industry, the very industry with which Complainant is associated.
The evidence further supports the determination that the disputed domain name is being used to direct to a parking page bearing the words “Google pixel.” While Respondent asserts that he uses the disputed domain name to host public and non-public content related to his business, he seems to indicate in his Response that he has not touched the front page of the relevant website since 2010. In any case, as Complainant emphasizes in its “Further Statement,” the alleged use by Respondent does not excuse his registration and use of a domain name incorporating the well-known GOOGLE mark. See TV Globo Ltda. v. Globoesportes.com, Case No. D2000-0791 (finding bad faith where: (1) the domain name in dispute is obviously connected with a well-known mark; (2) respondent deliberately chose a domain name which is the mark of the largest TV operator; and (3) respondent failed to develop the site.
The Panel rejects Complainant’s assertion that the Panel find the requisite bad faith based on Respondent’s offer to sell the domain name “for a grossly inflated amount” since the evidence clearly indicates that Complainant’s representative initiated the inquiry regarding the purchase of the domain name. See Betco Corp., Ltd. v. R. Zimmerman/envirozymes, FA 1787028 (Forum June 25, 2018) (“In this case, the Respondent did not initiate discussions about selling the name but only responded to an inquiry from 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 <googlepixel.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: December 20, 2021
[i] The evidence indicates that Google owns registrations throughout the world, including U.S. Registration Nos. 2884502; 2806075; 4123471; and 4168118, among others.
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