Google LLC v. Mohammadreza Ahmadi
Claim Number: FA2204001991748
Complainant is Google LLC (“Complainant”), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Mohammadreza Ahmadi (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name ay issue is <getoutline.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 April 11, 2022; the Forum received payment on April 11, 2022.
On April 12, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <getoutline.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 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@getoutline.net. Also on April 12, 2022, 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 April 12, 2022.
On April 18, 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 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.
Respondent requests Complainant to dismiss the current case.
A. Complainant
Complainant contends as follows:
Complainant, Google LLC, uses the OUTLINE mark in association with network security software and other network protections under its “Jigsaw” business unit.
Complainant used the OUTLINE mark since launching related services after March 2018.
Complainant applied for registration in the OUTLINE mark with the United State Patent and Trademark Office on February 22, 2022.
The <getoutline.net> domain name is identical or confusingly similar to Complainant’s OUTLINE mark because it incorporates Complainant’s OUTLINE mark while adding in the generic term “get” and the “.net” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <getoutline.net> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use the OUTLINE mark. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the domain name to offer the same services Complainant offers in furtherance of a phishing scheme. Respondent was on notice of the strong rights Complainant possesses in the OUTLINE mark.
Respondent registered and uses the <getoutline.net> domain name in bad faith because Respondent uses the domain name to advertise competing services. Respondent engaged in opportunistic bad faith by using a mark that is so obviously connected with its products. Respondent lifts content for its website from Complainant’s legitimate online content. Respondent makes use of a privacy service to conceal its identity. Respondent acted with actual knowledge of Complainant’s rights in the OUTLINE mark.
B. Respondent
Respondent contends as follows:
The at-issue domain name is associated with a website run by fans of Complainant’s services and is used in support of such services.
Respondent is a number of OUTLINE lovers who spontaneously and voluntarily spent money and launched a website to further support Complainant’s team and product as an OUTLINE community.
Respondent never intended to abuse the OUTLINE brand.
Respondent’s goal was to help and work with Complainant.
Respondent can work with Complainant in a friendly way to develop, introduce and expand the OUTLINE community.
Respondent doess not like to get involved in legal issues and lawsuits at all, because Respondent represents fans of OUTLINE and the Jigsaw team.
Respondent asks Complainant to withdraw its complaint so that Respondent can work with Complainant.
In the near future, Respondent decided to contact Complainant and talk to Complainant to improve the OUTLINE community and offer Complainant new plans to introduce and develop OUTLINE as much as possible.
The developer of the community website will soon make changes to www.getoutline.net and the < getoutline.org> domain will be introduced as the official domain.
If Respondent needs to do something else, Respondent welcomes it.
B. Respondent’s additional submissions
Respondent in its additional submission contends as follows:
The website referenced by the at-issue domain name is only a fan site.
Respondent implores Complainant to halt this proceeding, as Respondent only wishes to work with Complainant.
Complainant has rights in the OUTLINE mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the OUTLINE.
Respondent uses the at-issue domain names to address a website advertising services competitive with Complainant’s services.
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.
Complainant has rights in a mark that is confusingly similar to the at-issue domain name.
Complainant shows that it has filled for a USPTO registration of the OUTLINE mark on February 22, 2022. Panels have found that the relevant date in establishing rights is the date on which the trademark application was filed. Registration of a mark with the USPTO may thus be sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also, Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”).
Importantly, Complainant need not have registered its trademark to proceed under the Policy. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant proffers sufficient evidence in its papers to show that Complainant’s mark has acquired secondary meaning and thus Complainant has common law trademark in such mark pre-dating Respondent’s registration of the at-issue domain name. Therefore and without any opposition from Respondent on point, the Panel finds that Complainant has rights in a mark for the purposes of Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and on-going and secondary meaning was established). Furthermore the circumstance of this case as discussed elsewhere herein indicate that Respondent was intent on trading off the goodwill inherent in Complainant’s OUTLINE. Respondent thereby implies by its actions that it believed Complainant to have colorable trademark rights in the OUTLINE mark.
Respondent’s <getoutline.net> domain names is confusingly similar to Complainant’s OUTLINE mark under Policy ¶ 4(a)(i). The domain name differs from Complainant’s trademark only by the addition the term “get” and the “.net” top-level domain name. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark 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 interests in respect of the 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 <getoutline.net> identifies the domain name’s registrant as “Mohammadreza Ahmadi” and the record before the Panel contains no evidence showing that Respondent is commonly known by the <getoutline.net> domain name. The Panel therefore concludes that Respondent is not commonly known by <getoutline.net> for the purposes of Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”)
Respondent uses <getoutline.net> to address a website advertising services in competition with Complainant’s business and in furtherance of a phishing scheme seeking to extract private personal information by fraud. Respondent’s <getoutline.net> website mimics Complainant’s legitimate OUTLINE website, displays Complainant’s OUTLINE trademark, and advertises services related to VPN and other network security methods. Further, the website features a form where website visitors may enter their private information. Respondent’s use of the at-issue domain name in this manner 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). See Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (finding no rights or legitimate interests where Respondent offered Complainant’s own financial news services in the Russian language); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent offers no evidence rebutting Complainant’s claims or suggesting that Respondent has rights or legitimate interests in <getoutline.net> aside from Respondent’s hollow insistence that the at-issue domain name and its referenced website supports a cadre of OUTLINE fans. Respondent fails to explain why, assuming true, such use confers Respondent with rights or legitimate interest in the <getoutline.net> domain name.
Given the forgoing, Complainant satisfies its initial burden and without any credible rebuttal evidence from Respondent demonstrates Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights or legitimate interests, Respondent uses its confusingly similar <getoutline.net> domain name to advertise competing services. Using the confusingly similar domain name in such a manner is disruptive to Complainant’s business and falsely implies that there is a sanctioned relationship between Complainant and Respondent when there is no such relationship. Respondent makes no effort to explain how its use of the domain name is in good faith in light of Complainant’s evidence to the contrary. Therefore, Respondent’s use of the domain name shows Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Wall v. Silva, FA 105899 (Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).
Moreover, Respondent registered <getoutline.net> knowing that Complainant had trademark rights in OUTLINE and thus in <getoutline.net>. Respondent’s actual knowledge of Complainant’s rights in <getoutline.net> is evident from the notoriety of Complainant’s trademark as well as from Respondent offering of competitive advertising on its <getoutline.net> website. Respondent’s prior knowledge of Complainant's OUTLINE trademark further indicates Respondent’s bad faith under 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 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 <getoutline.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 19, 2022
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