Incorporating famous trademarks into domains is the definition of cybersquatting. In the case of CoronavirusGoogle.com the inclusion of “Google” in the domain led to a UDRP being filed by the search engine giant.
The result was the same as in the recent case of GoogleCoronavirus.com : transfer the domain to the Complainant. In this case, the Respondent asked the panel to transfer the domain to Google.
Full details follow.
Google LLC v. Walter Lafky
Claim Number: FA2003001888604
PARTIES
Complainant is Google LLC (“Complainant”), represented by Brendan J Hughes of Cooley LLP, District of Columbia. Respondent is Walter Lafky (“Respondent”), Oregon, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coronavirusgoogle.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on March 17, 2020; the Forum received payment on March 17, 2020.
On March 18, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coronavirusgoogle.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@coronavirusgoogle.com. Also on March 19, 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.
On April 13, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is one of the most highly recognized and widely used Internet search services in the world.
Complainant holds a registration for the GOOGLE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,806,075, registered January 20, 2004).
Respondent registered the domain name <coronavirusgoogle.com> on or about March 13, 2020.
The domain name is confusingly similar to Complainant’s GOOGLE mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s GOOGLE mark.
Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to pass itself off as Complainant online in order to redirect Internet users seeking Complainant’s products or services to a website that has no affiliation with Complainant.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the GOOGLE mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit in this proceeding a Response meeting the requirements of the Policy and its attendant Rules. However, in e-mail messages addressed to the Forum, Respondent has recited as follows:
“I can get rid of the domain as soon as possible.… I have no attachment to the disputed domain.”
and: “I’d like to give them the domain.”
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following in order to obtain from a Panel a decision that a domain name be transferred to it:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name has been registered and is being used by Respondent in bad faith.
Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings of fact or conclusions of law. See, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum January 13, 2004:
In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . 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 also Disney Enterprises, 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.
DECISION
Respondent does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the challenged domain name be transferred to it. Rather, in the face of Complainant’s demand that the domain name be transferred to it, Respondent has expressed in writing its willingness to surrender it. The parties have thus effectively agreed in writing to a transfer of the domain name from Respondent to Complainant without the need for further proceedings.
It is therefore Ordered that the domain name <coronavirusgoogle.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 17, 2020
