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Big Horn Consultants tried to get #domains on behalf of Google, claims #UDRP Respondent

Catched.com

A Turkish Respondent in a UDRP filed by Google, just lost the domains GoogleLens.com, GoogleStudio.com, and GooglePark.com.

The domains were ordered to be transferred to the trademark holder of the famous GOOGLE mark.

Nothing crazy here.

What’s interesting, is that the Respondent asserted that a third party company called “Big Horn Consultants” attempted to acquire the domains for $2,500 dollars each, an offer that the UDRP Respondent declined. According to the Respondent, the third party then stated they will contact Google to process a dispute.

Is Big Horn Consultants truly a company acting as a “proxy buyer” for brand owners such as Google?

We could not verify this based solely on Google results, but the domain BigHornConsultants.com was registered in 2011 with a location in Reno, Nevada.

According to their web site:

“We are company dedicated to helping our clients navigate and thrive in what can often be the harsh and rugged landscape of the domain name world.”

Whether this is truly a proxy buyer providing brand acquisition services, or not, that line of copy needs to be re-written! 😀

Details of the UDRP for the Google domains follow:

Google LLC v. egeSoft SA / egesoft.com

Claim Number: FA2004001893555

PARTIES

Complainant is Google LLC (“Complainant”), represented by Brian J. Focarino of Cooley LLP, District of Columbia, USA. Respondent is egeSoft SA / egesoft.com (“Respondent”), Turkey.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <googlelens.com>, <googlestudio.com>, and <googlepark.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.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 24, 2020; the Forum received payment on April 24, 2020.

On April 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googlelens.com>, <googlestudio.com>, and <googlepark.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2020 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@googlelens.com, postmaster@googlestudio.com, postmaster@googlepark.com. Also on April 29, 2020, 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. Respondent did however send e-mails to the Forum, see below.

On May 24, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant states that it is a multinational technology company based in the United States. The GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, the GOOGLE search engine has become one of the most highly recognized and widely used Internet search services in the world. The GOOGLE search engine maintains one of the world’s most impressive collections of indexed online content. It provides an easy-to-use interface, advanced search technology, and a comprehensive array of search tools that allows Internet users to search for and find a wide variety of online content in many different languages. Complainant has rights in the GOOGLE mark through its trademark registrations in the United States in 2004. The GOOGLE mark was found to be one of the top five Best Global Brands throughout the last several years. In fact, on February 1, 2017, the Brand Finance Global 500, which identifies the world’s most valuable brands, ranked GOOGLE as the most valuable brand in the world.

Complainant alleges that the disputed domain names are confusingly similar to its GOOGLE mark because each of them incorporates the mark in its entirety, merely adding the descriptive or non-distinctive terms, respectively, “lens”, “studio”, and park”; and a “.com” generic top-level domain (“gTLD”).

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s GOOGLE mark and is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain names resolve to websites that attempt to pass off as Complainant and trick Internet users into believing that the websites are affiliated with Complainant.

Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has offered to sell the disputed domain names for a price that is excessive in light of its out-of-pocket costs. Respondent uses the disputed domain names to attract Internet users to its websites and pass off as Complainant. Additionally, Respondent had actual knowledge of Complainant’s rights in the GOOGLE mark prior to registering the disputed domain names, and willfully intended to violate Complainant’s rights.

B. Respondent

Respondent failed to submit a Response in this proceeding. In its e-mails to the Forum, Respondent states, in pertinent part (sic):

i have registered those domain names years ago intending to share my technology ideas as blog posts.

i have no commercial intentions and bad-faith about teh well-known brand Google but as a digital researcher to share some blog articles.

some mid-man , brokers contact me last week to purchase those domain names in the name of Google Company

i am ready and accept respectfully Google Brands rights and exactly ready to transfer all those three domain names authority to Google LLC side.

And (sic):

i did not use those domains since i registered them and also had no intention to sell to anybody.

however about three weeks ago a broker consultant company name Big Horn Consultants represating you contact me and offer 2500 usd for each name.

as i told above i have no intention to use them for commercial use and even i accept their offer they told me they will contact with you to process dispute.

i am ready and accept respectfully Google Brands rights and exactly ready to transfer all those three domain names authority to Google LLC side.

i kindly offer you common agreement-settlement about those domains

i can transfer those three domain without waiting for forum dispute process.

FINDINGS

For the reasons set forth below, the Panel will not make any findings of fact.

DISCUSSION

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.

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.”

In the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. 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.

See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also 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 Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

Identical and/or Confusingly Similar

For the reasons set forth above, the Panel will not analyze this element of the Policy.

Rights or Legitimate Interests

For the reasons set forth above, the Panel will not analyze this element of the Policy.

Registration and Use in Bad Faith

For the reasons set forth above, the Panel will not analyze this element of the Policy.

DECISION

Given the common request of the Parties, it is Ordered that the <googlelens.com>, <googlestudio.com>, and <googlepark.com> domain names be TRANSFERRED from Respondent to Complainant.

Richard Hill, Panelist

Dated: May 24, 2020


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Comments

2 Responses to “Big Horn Consultants tried to get #domains on behalf of Google, claims #UDRP Respondent”
  1. Marco says:

    Big Horn is well known as an agent for Fortune 500.

  2. DomainGang says:

    Marco – Thanks. There’s a Big Horn Consulting and a Big Horn Consultants, both in Reno, Nevada.

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