DECISION

 

Google LLC v. Alejandro Greenfield

Claim Number: FA2111001973409

 

PARTIES

Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA.  Respondent is Alejandro Greenfield (“Respondent”), Finland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <xn--ggle-gx5aa.com>, registered with GoDaddy.com, 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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 15, 2021; the Forum received payment on November 15, 2021.

 

On November 16, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <xn--ggle-gx5aa.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 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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--ggle-gx5aa.com.  Also on November 17, 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 22, 2021.

 

On November 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant is a global technology company, specializing in internet search services. Complainant has rights in the GOOGLE mark through its registrations with various trademark agencies throughout the world (e.g. USPTO, and UKIPO).

 

Respondent’s <xn--ggle-gx5aa.com> domain name, which translates to <gọọgle.com>, is identical or confusingly similar to Complainant’s GOOGLE mark as it incorporates the mark and swaps the both the “o” letters for the “ọ” unicode character, along with adding the “.com” generic top-level domain (“gTLD”).

 

Respondent lacks rights and legitimate interests in the <xn--ggle-gx5aa.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its GOOGLE mark in the at-issue domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead offers parked, pay-per-click links on the at-issue domain name’s resolving website.

 

Respondent registered and uses the <xn--ggle-gx5aa.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting parked, pay-per-click links on the disputed domain name’s resolving website. Respondent registered the domain name with knowledge of Complainant’s rights in the mark. Respondent hid its identity behind a WHOIS privacy service.

 

B. Respondent

Respondent contends as follows:

 

Respondent has not read the papers thoroughly.

 

The at-issue domain was registered just for fun and has never been used in anything. A GODADDY parked page is addressed by the at-issue domain name.

 

Respondent has nothing against Complainant taking that domain.

 

Respondent has done nothing wrong.

 

FINDINGS

Complainant has rights in the GOOGLE mark as demonstrated by its registration of such mark with the USPTO.

 

Respondent unequivocally consents to transferring the at-issue domain names to Complainant.

 

DISCUSSION

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.

 

PRELIMINARY ISSUE: CONSENT TO TRANSFER

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶ 4(a)
(ii) or 4(a)(iii), when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines,  Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)

 

In the instant case, Respondent agrees to transfer its at-issue domain name to Complainant stating that it has nothing against Complainant taking that domain. The Panel, noting that the parties’ agree as to the disposition of the at-issue domain name, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name  to the complainant. As more fully discussed in the cases referenced immediately above, as a necessary prerequisite to Complainant obtaining its requested relief ‑even where Respondent agrees to such relief‑ Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name.

 

Here, Complainant’s ownership of a USPTO trademark registration, as well as other registrations worldwide for its GOOGLE trademark, shows Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Furthermore, Respondent’s <xn--ggle-gx5aa.com> domain name is a PUNYCODE translation of <gọọgle.com>. It is thus identical or confusingly similar to Complainant’s GOOGLE mark as it incorporates the GOOGLE mark and swaps both “o” letters for the “ọ” unicode character, and adds a “.com” generic top-level domain (“gTLD”).  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 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); see also, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) Therefore the Panel finds that the at-issue domain name is confusingly similar to Complainant’s trademark pursuant to Policy ¶ 4(a)(i).

 

In light of Respondent’s consent to transfer the confusingly similar at-issue domain name as discussed above, further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy is not warranted.

 

DECISION

The Respondent having agreed to transfer the domain name to Complainant and the Panel having found Complainant to have rights in a relevant trademark, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <xn--ggle-gx5aa.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  November 24, 2021