Google LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2112001975458
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--googe-95a.com> (the disputed domain name”), registered with GoDaddy.com, LLC (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2021; the Forum received payment on December 1, 2021.
On December 2, 2021, the Registrar confirmed by e-mail to the Forum that the <xn--googe-95a.com> disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. The Registrar 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 December 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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--googe-95a.com. Also on December 6, 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 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a well-known technology company and search engine provider. Complainant has rights in the GOOGLE trademark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,884,502, registered on September 14, 2004) (hereinafter collectively referred to as the “GOOGLE Mark).
The Complainant claims that Respondent’s <xn--googe-95a.com> disputed domain name is identical or confusingly similar to the GOOGLE Mark as the disputed domain name is comprised entirely of the mark and uses a punycode Internationalized Domain Name (“IDN”).[i] The disputed domain name is translated from punycode as <googĺe.com>, the Complainant’s GOOGLE Mark, and incorporates the entirety of the mark, swapping the letter “l” for the “ĺ” unicode character and adds the “.com” generic top-level domain (“gTLD”).
The Complainant also contends that Respondent has no rights or legitimate interests in the <xn--googe-95a.com> (translated from punycode as <googĺe.com>) disputed domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the GOOGLE Mark in any way. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name initially resolved to a parked webpage that provided click-through links related to Complainant’s GOOGLE Mark. Complainant provided a screenshot of the disputed domain name’s resolving website, which displayed pay-per-click links. [ii]
The Complainant further contends that Respondent registered and used the <xn--googe-95a.com> (translated from punycode as <googĺe.com>) disputed domain name in bad faith as the disputed domain name initially resolved to a parked webpage that provided click-through links related to Complainant’s mark and thus, disrupted Complainant’s business for commercial gain. Further, Respondent offers the disputed domain name for sale in excess of its out-of-pocket costs, another indication of bad faith. Complainant provided screenshots showing the disputed domain name for sale online.
Moreover, Complainant states that Respondent has exhibited a pattern of bad faith where the respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of the complainants.
Finally, Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GOOGLE Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds trademark rights in the GOOGLE Mark and that Respondent’s <xn--googe-95a.com> disputed domain name is identical or confusingly similar to the GOOGLE Mark as the disputed domain name is comprised entirely of the mark and uses a punycode IDN. The Panel further finds that Respondent lacks rights or legitimate interests in the use of the disputed domain name as the disputed domain name redirects to a landing page with pay-per-click links. Finally, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent offered the disputed domain name for sale in excess of its out-of-pocket costs, Respondent had actual knowledge of the GOOGLE Mark prior to registering the disputed domain name, and Respondent is a serial cybersquatter.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 that Complainant has rights in the GOOGLE Mark through its registrations with the USPTO (e.g. Reg. No. 2,884,502, registered on September 14, 2004). Registration with the USPTO is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”).
The Panel concludes that the <xn--googe-95a.com> (translated from punycode as <googĺe.com>) disputed domain name is confusingly similar to Complainant’s GOOGLE Mark. Under Policy ¶ 4(a)(i), where an IDN incorporates a Complainant’s trademark with a letter swapped for a unicode character, and adds the “.com” gTLD, past panels have found that the domain name is identical or confusingly similar to a complainant’s mark. See NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (Forum May 11, 2017) (finding <nıke.com> [xn--nke-jua.com] confusingly similar to NIKE and noting, “Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶ 4(a)(i) analysis of confusing similarity”). Here, the disputed domain name, translated from punycode, incorporates Complainant’s GOOGLE Mark, replacing the letter “l” with the “ĺ” unicode character, and adding the “.com” gTLD.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its GOOGLE Mark in the disputed domain name. The Panel also concludes that the Respondent does not use the <xn--googe-95a.com> (translated from punycode as <googĺe.com>) disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use because under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host parked pay-per-click links is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that Respondent registered and used the <xn--googe-95a.com> (translated from punycode as <googĺe.com>) disputed domain name in bad faith.
First, under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host parked pay-per-click links is generally considered evidence of bad faith registration and use. See For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”).
Second, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the GOOGLE Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). The GOOGLE Mark, which was adopted by Complainant in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. The GOOGLE Mark is widely known in the United States and other jurisdictions worldwide. It therefore strains credulity to believe that Respondent had not known of the Complainant or its GOOGLE Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Third, the Panel finds that Respondent’s offer to sell the disputed domain name is evidence of bad faith registration and use. Under Policy ¶ 4(b)(i), general offers to sell a disputed domain name may demonstrate bad faith where Respondent registered the domain name with the intent to sell it in excess of its out-of-pocket costs. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale.
Finally, the Panel finds that Respondent engaged in a pattern of bad faith registration and use by participating in a pattern of cybersquatting. Per Policy ¶ 4(b)(ii), evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of cybersquatting, demonstrating bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010). Respondent has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of the disputed domain names containing the trademarks of the complainants). Here, Respondent has registered and is using a domain name containing a well-known third-party trademark; such conduct is indicative of bad faith registration and use.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <xn--googe-95a.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: January 7, 2022
[i] 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 the domain name are encoded into a scheme called a punycode. To display the disputed domain name in punycode as <googĺe.com>, Respondent first had to encode it into the <xn--googe-95a.com> disputed domain name. Past UDRP panels have found IDNs and their punycode translations to be equivalent. This Panel finds that the <googĺe.com> domain name is the same as its punycode translation, <xn--googe-95a.com>, for purposes of this proceeding.
[ii] As of the writing of this Decision, however, the disputed domain name resolves to a landing page that states: “Did you mean google.com? The site you just tried to visit looks fake. Attackers sometimes mimic sites by making small, hard-to-see changes to the URL”.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page