WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google LLC and Google Ireland Holdings Unlimited Company v. Host Master, PrivActually Ltd

Case No. DEU2019-0010

1. The Parties

The Complainant is Google LLC, United States of America (“United States”) and Google Ireland Holdings Unlimited Company, Ireland, represented by Cooley LLP, United States.

The Respondent is Host Master, PrivActually Ltd, Cyprus.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <googletagmanager.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is EURid vzw.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2019. On July 2, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On July 4, 2019, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2019. On July 11, 2019, the reseller of the Registrar of the disputed domain name sent an email communication to the Center, stating “Hi, This was a domain name used for phishing that were suspended back then but it also expired some days ago. Kind regards, Njalla team.”

In accordance with the ADR Rules, Paragraph B(3), the due date for Response was August 23, 2019. On August 27, 2019, the reseller of the Registrar of the disputed domain name sent another email communication to the Center, stating “Hi, The domain have been suspended because of the user violated our TOS. There is not need to waste time on this. If the other part would like to have this domain they can have it.” The Respondent did not submit a compliant Response. Accordingly, the Center notified the Respondent’s default on September 16, 2019.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on September 23, 2019. 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 ADR Rules, Paragraph B(5).

4. Factual Background

The Complainant is filed by the United States company Google LLC and the Irish company Google Ireland Holdings Unlimited Company.

The United States company is the owner of the GOOGLE trademarks.

It relies on a worldwide trademark protection and produces a list of trademarks on 44 pages, including GOOGLE trademarks valid in the European Union. (See Annex 5 of the Complaint)¹.

According to Paragraph B(7)(a) of the ADR Rules “The Panel shall conduct the ADR Proceeding in such manner as it considers appropriate in accordance with the Procedural Rules. The Panel is not obliged, but is permitted in its sole discretion, to conduct its own investigations on the circumstances of the case”.

The Panel consulted the European Union Intellectual Property Office (“EUIPO”) trademark database and could identify the word & device GOOGLE International registration designating the European Union No. 0881006, protected in classes 9, 38 and 42, registered on January 12, 2006 and renewed.

It did not pursue its searches, given the worldwide reputation of the GOOGLE trademark.

The disputed domain name was registered on July 8, 2018 in the name of a company called PrivActually Ltd domiciled in Cyprus.

The disputed domain name does not resolve to any website.

The Complainant produces a search on the website “www.virustotal.com” which analyzes “suspicious files and URLs to detect types of malware, automatically share them with the security community” and detected 8 malwares installed on the disputed domain name.

5. Parties’ Contentions

A. Complainant

Created in 1997, the Complainant is a highly recognized and widely used Internet search engine worldwide.

The Complainant relies on its technology and explains that in addition to this service, it offers a wide range of products and services beyond the renowned search engine, including a variety of related technological, mobile and cloud products and services.

Among these offers, is the Google Tag Manager, which is a tag management system created by Google to manage JavaScript and HTML tags used for tracking and analytics of websites, which was launched in 2012.

Identical or Confusingly Similar

The disputed domain name fully incorporates the worldwide well-known GOOGLE trademark to which the generic terms “tag” and “manager” are added.

The disputed domain name predates the GOOGLE trademarks which is “nearly identical or confusingly similar” to the GOOGLE trademark.

The terms “tag” and “manager” are the name of the identically named Google Tag Manager offer.

The fame of the GOOGLE trademark, along with the addition of these terms will cause a confusion and let Internet users believe that the disputed domain name is sponsored by the Complainant, which is not true.

Rights or Legitimate Interests

The Complainant submits that the Respondent was not authorized or licensed to use any of the GOOGLE trademarks and that it is not commonly known by the disputed domain name or by any name composed with GOOGLE.

Moreover, the Respondent uses the disputed domain name to resolve to a website that contains multiple types of malware.

Therefore, the Complainant argues that the Respondent does not have rights or legitimate interests in the disputed domain name.

Registered or Used in Bad Faith

The disputed domain name post-dates the registration of the Complainant’s GOOGLE trademark.

The fame and unique qualities of the GOOGLE trademark, as well as the Google Tag Manager offering, both of which were adopted and used by Co-Complainants before the disputed domain name was created render it implausible that Respondent created the disputed domain name independently.

It is clear that Respondent created the disputed domain name intentionally to improperly exploit the GOOGLE trademark value and it is impossible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate, such as passing off, or an infringement on consumer protection legislation, or an infringement of the GOOGLE trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The decision relies on the ADR Rules and Supplemental Rules.

According to Paragraph B(1)(b)(10) of the ADR Rules, the Complainant has to prove:

“A. why the domain name is identical or confusingly similar to the name or names in respect of which a right or rights are recognized or established by national and/or Community law (as specified and described in accordance with Paragraph B(1)(b)(9)); and, either
B. why the domain name has been registered by its holder without rights or legitimate interests in respect of the domain name that is the subject of the Complaint; or
C. why the domain name should be considered as having been registered or being used in bad faith”.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law

The disputed domain name is confusingly similar to the Complainant’s GOOGLE trademark.

Indeed, the disputed domain name reproduces the Complainant’s GOOGLE trademark in its entirety.

The addition of the generic terms “tag” and “manager”, which are related to a service offered by Google to Internet users, does not prevent a finding of confusing similarity, since the Complainant’s trademark GOOGLE is clearly recognizable in the disputed domain name.

B. Rights or Legitimate Interests

The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to Paragraph B(1)(b)(10) of the ADR Rules.

The Respondent has not been licensed or authorized to use the Complainant’s trademarks or to register the disputed domain name.

The Respondent did not make a fair or noncommercial use of the disputed domain name.

Given the fame of the GOOGLE trademark, the Panel is of the opinion that the disputed domain name has been registered by the Respondent without rights or legitimate interests.

In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s absence of rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The ADR Rules provide that the Complainant proves that the disputed domain names is either identical or confusingly similar to a name or right are recognized or established by national and/or Community law and, alternatively, that it has been registered by its holder without rights or legitimate interests, or that should be considered as having been registered or being used in bad faith.

Since the Panel is of the opinion that the disputed domain name has been registered by the Respondent without rights or legitimate interests, it does not have to further analyze if it was registered or used in bad faith. However, for completeness, the Panel finds that the apparent passive holding of the disputed domain name, given the fame of the Complainant’s trademark, together with the detection of malware, is evidence of bad faith registration and use.

D. Eligibility Criteria

The United States company that owns the GOOGLE trademarks asks the Panel to transfer the disputed domain name to the Co-Complainant which is the Irish company Google Ireland Holdings Unlimited Company.

According to Paragraph B(1)(b)(12) of the ADR Rules, the Complainant which requests the transfer of the disputed domain name, has to “provide evidence that the Complainant satisfies the general eligibility criteria for registration set out in Article 4(2)(b) of Regulation (EC) No 733/2002”.

According to Article 4(2)(b)(ii) of the Regulation (EC) No 733/2002 of the European Parliament and of the Council of April 22, 2002, which was still in force on July 2, 2019, when the complaint was filed, the relevant criteria is that the Co-Complainant is an “ organization established within the Community without prejudice to the application of national law”.

Therefore, the Panel checked that the Co-Complainant established in Ireland is indeed connected with the United States company Google and its searches confirmed this situation.

As provided by the Regulation (EC) No 733/2002 of the European Parliament and of the Council of April 22, 2002, the Co-Complainant Google Ireland Holdings Unlimited Company satisfies the eligibility criteria such as set forth in Article 4(2)(b)(ii), since it is an” organization established within the Community without prejudice to the application of national law”.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <googletagmanager.eu> be transferred to the Complainant, the Irish company Google Ireland Holdings Unlimited Company.

Marie-Emmanuelle Haas
Sole Panelist
Date: October 15, 2019

¹ The Panel notes that this portfolio does not per se prove that these trademarks are valid.