The Complainant is Google Inc. of Mountain View, California, United States of America ("United States"), represented by Cooley LLP, United States.
The Respondent is Ravi Singh of La Coste, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with TPP Wholesale Pty Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for verification in connection with the Domain Name. On October 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 3, 2016.
The Center appointed Alan L. Limbury as the sole panelist in this matter on November 9, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a well-known United States multinational technology company specializing in Internet-related services and products. Since 1998, it has used the trademark GMAIL in connection with the provision of email and electronic messaging services and has registered that mark in many countries, including in Australia (e.g., trademark No.1049129, registered on April 4, 2005 in Class 38).
The Complainant operates a "Gmail Help Center" in connection with its Gmail email service at "", providing support and information regarding Gmail accounts, messages, contacts and technical issue troubleshooting.
According to the Registrar, the Domain Name was registered on June 15, 2015. The home page of the website to which it resolves provides a "Gmail Support Number Australia" with the Australian country code prefix, announcing: "Welcome to the Gmail Help Center" and offering "Gmail Help", "Gmail Password Recovery", "Gmail Account Recovery" and "Gmail Hacked Account Recovery".
A disclaimer in much smaller print than anything else on the website reads:
"We are not Gmail and at any point don't claim to be associated with Gmail in any way. We provide free help for Gmail issues and only charge for issues related to operating system, viruses & other problems due to hacking and phishing.
We have not registered this domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. We have not used Gmail trademark anywhere in this site to mislead or to make visitors believe we are Gmail.
We have not registered the domain name to disrupt the business of Gmail or any of its brands.
By using this domain name, we are not intentionally attempting to attract Internet users to our website or other on-line location for commercial gain. We tell upfront this Gmail support through us is free however for other support customer seek they need to pay."
The disclaimer is followed (in larger print) by a description of a range of email account issues that can be fixed by a team of reliable, well-trained technicians available instantly by calling the support number. 5. Parties' Contentions A. Complainant
The Complainant says the Domain Name is confusingly similar to its distinctive GMAIL trademark because the fame of that mark and the non-distinctiveness of the added terms will cause users encountering the Domain Name mistakenly to believe the Domain Name originates from, is associated with, or is sponsored by Gmail or the Complainant.
The Complainant says the Respondent has no rights or legitimate interests in respect of the Domain Name because, on information and belief, the Respondent is not commonly known as the Domain Name or any name containing the Complainant's GMAIL mark; the Complainant has not authorized or licensed to the Respondent any of its trademarks; the Respondent cannot claim that it is offering bona fide goods or services by redirecting users who are seeking information regarding the Complainant's Gmail email service to a website that purports to offer Gmail technical support and password recovery services.
The Complainant says that in all likelihood, the Respondent sells the personal information collected from the Complainant's misdirected users – including users' confidential Gmail passwords – as part of a phishing scheme, thereby deriving ill-gotten profits. This would not amount to legitimate noncommercial or fair use of the Domain Name and would demonstrate bad faith registration and use. Even if the Respondent were offering legitimate technical support services, the use of the GMAIL mark in connection with commercial technical support services which compete directly with the Complainant's own Gmail Help Center would not be a bona fide offering of goods or services or a legitimate noncommercial or fair use and would demonstrate bad faith registration and use.
By prominently featuring the GMAIL mark on the website corresponding with the Domain Name, the Respondent attempts to pass himself off as the Complainant.
Given the Respondent's registration of the Domain Name that fully incorporates the Complainant's famous GMAIL mark, it is impossible to conceive of any potential legitimate use of the Domain Name which demonstrates that the Domain Name is being used in bad faith. The Respondent "could not have chosen or subsequently used … its Domain Name for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith." Control Techniques Ltd. v. Lektronix Ltd.,WIPO Case No. D2006-1052 (October 11, 2006). B. Respondent
The Respondent did not submit any response. 6. Discussion and Findings
Under paragraph 15(a) of the Rules, "A Panel shall 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 absence of a Response, paragraph 5(e) of the Rules requires the Panel to "decide the dispute based upon the complaint". In the event of such a "default" the Panel is required under paragraph 14(a) of the Rules "to proceed to a decision on the complaint", whilst under paragraph 14(b) of the Rules the Panel "shall draw such inferences therefrom as it considers appropriate".
Paragraph 4(a) of the .auDRP requires the Complainant to prove:
(i) the Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or subsequently used in bad faith. A. Identical or Confusingly Similar
The Complainant has shown that it owns numerous registered trademarks for GMAIL, including Australian trademark No. 1049129. The Domain Name comprises that mark, followed by the words "support" and "australia", which do nothing to detract from the distinctiveness of the trademark. Rather they increase the likelihood that Internet users will believe the Domain Name belongs to the Complainant. The inconsequential country code Top-Level Domain ("ccTLD") extension "" may be disregarded.
Accordingly, the Panel finds the Domain Name to be confusingly similar to the Complainant's mark. B. Rights or Legitimate Interests
The Panel finds that the GMAIL mark is distinctive and widely known in Australia and worldwide. The Complainant's assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent.
The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in respect of the Domain Name. See LEGO Juris A/S v. Brock Flanagan, BJF Web Design,WIPO Case No. DAU2016-0027 (August 19, 2016). The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered or Subsequently Used in Bad Faith
Unlike the UDRP, the .auDRP does not require a showing that the Domain Name has been both registered and subsequently used in bad faith. It is sufficient to establish one or other of those circumstances. However, in this case the Panel finds that the Complainant has established both.
Paragraph 4(b) of the .auDRP provides that, for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location; or
(v) if any of your representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.
The Domain Name was registered many years after the Complainant first registered its GMAIL trademark in Australia.
It is unnecessary for the Panel to decide whether or not the Respondent is engaging in a phishing enterprise or is offering genuine services because Internet users seeing the Domain Name are likely to think that the Domain Name would lead to a website in the ".au" domain space of the Complainant or an Australian subsidiary or affiliate of the Complainant. In the Panel's opinion, it is more likely than not that when registering the Domain Name the Respondent had the Complainant's GMAIL trademark in mind. As in "Dr. Martens" International Trading GmbH, "Dr. Maertens" Marketing GmbH v. McDonald Cooper Properties Pty Ltd., Andrew Cooper,WIPO Case No. DAU2016-0008 (May 5, 2016), absent any contrary evidence or explanation from the Respondent, the Panel concludes that the Respondent registered the Domain Name with the intention of benefiting from that assumed association between the Domain Name and the Complainant and was aware that the Complainant had not in any way authorised such conduct.
The relevance of a disclaimer on the website is addressed in the auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDA auDRP Overview 1.0"), paragraph 3.5:
"The general position is the same as that under the UDRP.
The existence of a disclaimer cannot, by itself, cure bad faith when bad faith has been established by other factors. This is typically explained by auDRP panels with reference to the probability of Internet user '[…] confusion – i.e., by the time the user reaches and reads any disclaimer on a webpage to which the domain name resolves, any respondent objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved.
A disclaimer may in fact show that the respondent had prior knowledge of the complainant's trademark or name. This, in turn, may support a finding that the respondent has acted in bad faith, as well as a finding that the respondent does not have rights or legitimate interests in the domain name. The lack of a disclaimer on a website to which the domain name resolves may support a finding that the respondent's use of the domain name is deliberately misleading, and thus may provide evidence of bad faith use, as well as preclude a finding that the respondent has rights or legitimate interests in the domain name (see, e.g., Perpetual Limited v. Perpetual Home Loans Pty Ltd (ACN 120010657),WIPO Case No. DAU2009-0009).
In the circumstances of this case, the disclaimer appears in much smaller print than the remainder of the website and is likely to be overlooked by some Internet users. Even if read by others, they will have been induced to arrive at the Respondent's website by the confusion generated by the use of the Complainant's GMAIL mark together with the words "support" and "australia". Having arrived, some are likely to be induced to engage the Respondent's services, including those for which a charge is made, whether they read the disclaimer or not. Hence the Panel finds that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website or of a service on that website.
In the Panel's opinion therefore, the Domain Name was both registered and is being used in bad faith. 7. Remedy
The Complainant has requested transfer of the Domain Name. The Complainant satisfies the eligibility criteria to become registrant of the Domain Name because the Complainant is the owner of the Australian Registered GMAIL trademark and the Domain Name is closely and substantially connected to the Complainant. 8. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Date: November 14, 2016
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