Google LLC v. Nanci Nette / Name Management Group
Claim Number: FA2112001977287
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Nanci Nette / Name Management Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <androidblog.us>, <fortniteandroid.us>, and <googsearch.us>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2021; the Forum received payment on December 16, 2021.
On December 16, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2022 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@androidblog.us, postmaster@fortniteandroid.us, postmaster@googsearch.us. Also on December 20, 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 January 16, 2022, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 contends as follows:
Complainant is a well-known technology company and search engine provider. Complainant has rights in the GOOGLE and ANDROID marks through its registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names are identical or confusingly similar to Complainant’s marks as they incorporate all or most of the marks and add the words “blog” or “fortnite” along with the “.us” country code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names. Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized or licensed Respondent to use its GOOGLE or ANDROID marks in the at-issue domain names. Respondent does not use the domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use, but instead has used the domain names for a variety of purposes, including parked, pay-per-click links, hosting sites purporting to offer Amazon gift cards and a portal to play the game Fortnite, phishing, and no activity at all.
Respondent registered and/or uses the <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names in bad faith. Respondent offers the disputed domain names for sale. Respondent exhibited a pattern of bad faith registration and use. Respondent disrupts Complainant’s business for commercial gain. Respondent has used the domain names for a variety of purposes, including parked, pay-per-click links, hosting sites purporting to offer Amazon gift cards and a portal to play the game Fortnite, phishing, and no activity at all.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GOOGLE and ANDROID trademarks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the GOOGLE and ANDROID trademarks.
Respondent uses the at-issue domain names to address a webpage that at times promotes pay-per-click type hyperlinks, hosts websites offering unrelated products, acts as a gaining portal, facilitates phishing, and sometimes fails to address any content.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its GOOGLE and ANDROID trademarks. Any relevant national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Respondent’s <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names each contain one of Complainant’s trademarks or a recognizable truncated version thereof; adds a generic term, and concludes with the domain top-level domain name “.us”. The differences between Respondent’s domain names and Complainant’s relevant trademark are insufficient to distinguish either <androidblog.us>, <fortniteandroid.us>, or <googsearch.us> from Complainant’s relevant trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names are each confusingly similar to one of Complainant’s trademarks. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity); see also, Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding that Respondent’s <kisskay.com> domain name is confusingly similar to Complainant’s KAY and EVERY KISS BEGINS WITH KAY marks at it constitutes a mere abbreviation.).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use any of Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of any at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain names ultimately identifies the domain names’ registrant as “Nanci Nette” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by any at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by <androidblog.us>, <fortniteandroid.us>, or <googsearch.us> for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the at-issue domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names to address a websites that at various points in time feature offer different content, including advertisements for the videogame “Fortnite”, advertisements for an Amazon gift card, no content at all, various pay-per-click links, and finally, evidence of phishing activity. Respondent’s use of the confusingly similar domain names in such manners indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii) regarding any of the at-issue domain names. 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); see also, Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”); see additionally Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”); see also, Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (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 under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of each at-issue domain names under Policy ¶ 4(a)(ii).
Respondent’s <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding each of the domain names.
First, some of the at-issue domain names namely <androidblog.us> and <googsearch.us> appear to have been offered for sale online possibly indicating Respondent’s bad faith per Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). However, Complainant fails to show any direct connection between Respondent and the third part website’s listing. While Respondent may have authorized the posting of its domain names for sale on the website, it is equally possible that the website’s owner posted the domain names unbeknown to Respondent.
Next, Respondent has suffered adverse UDRP decisions as a respondent and has registered multiple at-issue domain names in the current proceeding. Respondent’s repeated cybersquatting evidences a pattern of domain name abuse and suggests Respondent’s bad faith in the instant case pursuant to 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 where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also, Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA1405001558045 (Forum July 10, 2014) (finding that the respondent’s registration of multiple domain names in the instant proceeding and prior adverse UDRP history was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)).
As mentioned above regarding rights and legitimate interests Respondent uses its confusingly similar domain names to address a webpage displaying hyperlinks related to services similar to those services provided by Complainant. Doing so is disruptive to Complainant’s business, is an improper attempt to commercially benefit from Complainant’s trademarks, and shows Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also, Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”); see also, Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”).
Additionally, Respondent registered and uses the <forniteandroid.us> domain name in bad faith under Policy ¶ 4(a)(iii), by inactively holding the at-issue domain name. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant also suggests that Respondent registered and uses one of the at-issue domain names, <fortniteandroid.us>, in bad faith since an associated program was flagged for phishing. Respondent’s phishing for user information demonstrates bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).
Finally, Respondent registered <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> knowing that Complainant had trademark rights in the GOOGLE and ANDROID marks. Respondent’s prior knowledge is evident from Respondent’s overt reference to Complainant’s GOOGLE and ANDROID trademarks in Respondent’s confusingly similar domain names and from the worldwide notoriety of such marks. Respondent’s prior knowledge of Complainant's GOOGLE and ANDROID’s trademark further indicates that Respondent registered and used the <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <androidblog.us>, <fortniteandroid.us>, and <googsearch.us> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 17, 2022
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