Google LLC v. Steven Ng
Claim Number: FA2205001998215
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Steven Ng (“Respondent”), represented by Grant Thomas of Thomas Whitelaw & Kolegraff, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--gogle-6dc.com>, registered with NameCheap, Inc.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2022; the Forum received payment on May 26, 2022.
On May 27, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <xn--gogle-6dc.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@xn--gogle-6dc.com. Also on May 31, 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 August 9, 2022.
Complainant submitted to the Forum an Additional Submission on August 10, 2022. That Additional Submission complied with Supplemental Rule 7, and will be considered by the Panel in its decision below. Subsequently, on August 11, 2022, Respondent submitted an Additional Submission that also met the requirements of Supplemental Rule 7 and that the Panel will also consider in its decision below.
On August 15, 2022, pursuant to Complainant’s and Respondent’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: INTERNATIONALIZED DOMAIN NAME
An internationalized domain name (“IDN”) is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display those characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. The disputed domain name, <xn--gogle-6dc.com>, is a PUNYCODE translation of the IDN, <gȯogle.com>.
Prior UDRP panels have found IDNs and their PUNYCODE translations to be equivalent. See Google LLC v. Christopher Hadnagy, FA 1944032 (Forum June 17, 2021) (finding the IDN, <gôōgle.com>, and its PUNYCODE translation, <xn--ggle-vqa84c.com>, to be the same under the Policy); see also Google Inc. v. Popov Vitaly, FA 1710030 (Forum Feb. 16, 2016) (finding that the <xn--oogle-wmc.com> domain name should be considered as equivalent to the <ɢoogle.com> domain name). This Panel similarly finds that the <gȯogle.com> domain name is the same as its PUNYCODE translation, <xn--gogle-6dc.com>, for purposes of this proceeding.
A. Complainant
- The Complainant was founded in 1998 in California and is now one of the most well-known internet search engine companies in the world. Moreover, its famous GOOGLE brand name/ trademark is ranked as one of the most valuable globally, assessed in 2021 to be worth US$191 billion. Complainant has registered its GOOGLE mark throughout the world, including with the United States Patent and Trademark Office (“USPTO”).
- The disputed domain name, <xn--gogle-6dc.com>, is confusingly similar to Complainant’s GOOGLE trademark. The disputed domain name is confusingly similar because it incorporates a PUNYCODE version of Complainant’s GOOGLE mark; i.e., the disputed domain name translates to <gȯogle.com>, differing from Complainant’s registered mark only through the special character “ȯ.” The addition of the “.com” generic top-level domain (“gTLD”) also fails to offer any meaningful distinction between the disputed domain name and the mark.
- Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use the GOOGLE mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Although the disputed domain name may have been used previously for other purposes, it now redirects internet users to Complainant’s search engine, thereby creating a false affiliation with Complainant.
- The disputed domain name was registered and is being used in bad faith. Complainant’s GOOGLE mark is so famous worldwide that registration of a domain name that incorporates the mark must be in bad faith. Also, Respondent’s use of the disputed domain name to redirect to Complainant’s legitimate website implies that there is a legitimate connection between the parties when none exists. Moreover, Respondent used a privacy shield in bad faith when registering the disputed domain name.
B. Respondent
- Respondent is a magician who uses the disputed domain name in connection with his onstage act. During a performance, only Respondent or another magician can access Respondent's website at <gȯogle.com>, which has a special accent character and thus requires multiple digital access manipulations involving the disputed domain name.
- The disputed domain name is not confusingly similar to Complainant’s GOOGLE trademark. First, the term, “gogle,” embedded within the disputed domain name, does not look like “Google.” Also, although the disputed domain name, <xn--gogle-6dc.com>, does electronically translate into <gȯogle.com>, the latter possesses only one “o” while the GOOGLE mark has two. Moreover, the distinctive additional accent character, “ȯ,” can only be accessed through several specific digital steps, and therefore internet users are unlikely to inadvertently type it when seeking Complainant’s website associated with the GOOGLE mark.
- Respondent concedes that he is not commonly known as the disputed domain name. However, he is using that name to conduct a bona fide offering of entertainment services. Furthermore, the disputed domain name is not likely to be accessed by any general internet user who is not a magician.
- The disputed domain name was not registered in bad faith. There was no intent by Respondent to create internet consumer confusion as any such consumer would be advised by Respondent’s website that it is not affiliated with Complainant. Also, any other magicians using the disputed domain name are also made aware that there is no connection between that name and Complainant’s search engine. Moreover, Respondent utilized a privacy service for registration of the disputed domain name solely to avoid publication of his personal address, not for any nefarious purpose.
C. Complainant’s Additional Submission
- The provision of legitimate services does not legitimize the use of a disputed domain name that infringes upon the trademark of Complainant. Respondent’s use of the disputed domain name depends on deceiving internet users into believing it is connected with Complainant’s famous mark.
- Respondent has also linked the disputed domain name to a website named “Magic with Google,” again infringing upon Complainant’s GOOGLE trademark and business.
- During an attempt by the parties to resolve this matter, Respondent clearly demonstrated his bad faith in registering and using the disputed domain name by suggesting that Complainant either hire Respondent as an employee or pay Respondent US$75,000 for the disputed domain name, a price clearly above Respondent’s out-of-pocket domain name registration/maintenance costs.
D. Respondent’s Additional Submission
- In his use of the disputed domain name, Respondent is in no way attempting to rely upon consumer confusion with Complainant’s trademark, because: the name is not discoverable on any internet search engine; the name contains special characters making it difficult to type; and the name attaches to a website which disavows any relationship with Complainant.
- The prior UDRP cases cited by Complainant in its Additional Submission are fundamentally different from this case and are thus irrelevant.
- Complainant’s Additional Submission reference to settlement negotiation specifics is made in bad faith and fails to provide evidence of Respondent’s bad faith with respect to registration and use of the disputed domain name.
Complainant is a famous United States company that has operated an internationally used and equally famous internet search engine since 1998. In connection with those operations, Complainant has registered its GOOGLE trademark with appropriate authorities throughout the world, including with the USPTO (e.g., Reg. No. 2,806,075; registered Jan. 20, 2004).
The disputed domain name, <xn--gogle-6dc.com>, is owned by Respondent, who registered that name on March 16, 2021. The disputed domain name is a PUNYCODE translation of the IDN, <gȯogle.com>, which is thus also owned by Respondent.
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 supplied the Panel with ample evidence, including a valid USPTO registration, that it is the owner of sufficient rights in the GOOGLE trade mark for the purposes of 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 demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Google Inc. v. serap ozk, FA 1562193 (Forum July 14, 2014).
As noted above, the Panel has found that the disputed domain name, <xn--gogle-6dc.com>, is a PUNYCODE translation for the IDN, <gȯogle.com>. In his filing, Respondent agrees with this finding and acknowledges his ownership of that IDN. Since the Panel also concludes that those two domain names are equivalent, it is appropriate that the Panel compare <gȯogle.com> to the GOOGLE trademark for identity or confusing similarity. They are not identical. Furthermore, Respondent argues that <gȯogle.com> is not confusingly similar to the GOOGLE mark due to the difference between “ȯ” in the name and “o” in the mark. The Panel completely disagrees, determining that the slight difference created by the diacritical alteration of one “o” could certainly cause confusion for an internet user quickly glancing at said domain name. Moreover, as Respondent concedes, the addition of the “.com” gTLD is irrelevant in this analysis of confusing similarity. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. See Google LLC v. Christopher Hadnagy, supra, (finding <gôōgle.com>, and its PUNYCODE translation, <xn--ggle-vqa84c.com>, to be confusingly similar to the GOOGLE mark): see also Google Inc. v. Popov Vitaly, supra, (finding <xn--oogle-wmc.com>, and its IDN equivalent, <ɢoogle.com>, to be confusingly similar to the GOOGLE mark).
Accordingly, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
As Complainant has shown that the disputed domain name is confusingly similar to Complainant’s trademark, and Complainant unequivocally asserts that it has granted Respondent no authorization or license to use the GOOGLE mark for any purpose, Complainant has sustained a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent must therefore come forward with clear evidence that he does possess those rights or interests. 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”).
Respondent, Steven Ng, admits in the Response that he has never been commonly known as the disputed domain name, and thus Policy ¶ 4(c)(ii) cannot be used by Respondent to rebut Complainant's prima facie case.
Respondent does contend, per Policy ¶ 4(c)(i), that he offers bona fide services as an entertainer in connection with the disputed domain name. However, Respondent provides the Panel no pertinent evidence -- for instance, in the form of media reviews, ticket sale amounts, venue site advertisements, publicity photographs, etc. -- to support his claim that he performs as a magician before substantial audiences on a regular basis. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.2:
If not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence.
Presented with merely self-serving claims in the Response and Respondent’s Additional Submission, the Panel cannot possibly find that Respondent truly offers bona fide services as a “magician” with respect to the disputed domain name or otherwise, thus rendering Policy ¶ 4(c)(i) inapplicable in this case.
Since Respondent has produced no clear evidence to rebut Complainant’s prima facie case, the Panel determines that it must prevail.
Accordingly, the Panel finds that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name.
Policy ¶ 4(b) lists four circumstances that support findings of bad faith registration and use of a disputed domain name, but the Panel is not limited to citing those circumstances as conclusive evidence of bad faith registration and use. See Advanta Corp. v. St. Kitts Registry, FA 1068741 (Forum Oct. 18, 2007) ("The Panel finds that the factors listed under Policy ¶ 4(b) are not the exclusive examples of evidence of bad faith registration and use.).
In this case, Complainant’s trademark, GOOGLE, is among the most famous in the world. Moreover, both Complainant and Respondent agree that Respondent has no affiliation or connection with Complainant or its mark. Therefore, in accord with prior Policy panels that have considered like circumstances, the Panel has no difficulty in concluding that the disputed domain name was registered and is being used in bad faith. See Google Inc. v. Eamonn Smyth, D2011-1023 (Wipo Aug. 11, 2011) (“...where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith.”); see also The Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (“Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.”).
Furthermore, in its Additional Submission, Complainant presents evidence of Respondent’s bad faith within an email sent during an attempt to settle this dispute prior to a final UDRP decision. In that email, Respondent suggests that he would accept either a payment of US$75,000 for the disputed domain name (obviously far exceeding his out-of-pocket domain name costs) or employment with Complainant, as he: is “talented and creative in creating technology and technological solutions;” also has friends employed by Complainant; and knows that Complainant “has in the past been known to hire people in unusual situations.” Given Respondent’s lack of independent evidence confirming his status as a “magician,” as noted above, the Panel believes that there is a substantial probability that Respondent, possessing considerable technology talent, registered and used the disputed domain name in bad faith to gain employment with Complainant (and to thereby join his many friends) in an “unusual situation” of his own concoction.
Accordingly, the Panel finds that Complainant has proved that the disputed domain name was registered and is being used in bad faith.
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--gogle-6dc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: August 29, 2022
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