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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google LLC v. Pcpatchers

Case No. DAU2018-0006

1. The Parties

The Complainant is Google LLC of Mountain View, California, United States of America ("United States"), represented by Cooley LLP, United States.

The Respondent is Pcpatchers of Morisset, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <gmailsupportnumberaustralia.com.au> (the "Domain Name") is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2018. On February 15, 2018, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Domain Name. On February 16, 2018, Web Address Registration Pty Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 7, 2018.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy"), 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 March 21, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2018. On March 22, 2018, and April 11, 2018, the Center received email correspondence from the Respondent. On April 10, 2018, the Center informed the Parties that the Center would proceed to panel appointment.

The Center appointed Nicholas Smith as the sole panelist in this matter on April 25, 2018. 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 United States technology company specialising in Internet-related services and products. Since 1998 the Complainant has offered email and email messaging services under the word mark "gmail" (the "GMAIL Mark"). As of February 2016 the Complainant has over one billion monthly active users of its Gmail services. The primary website for the Complainant's Gmail services is at "www.gmail.com".

The Complainant is the owner of numerous international registrations for the GMAIL Mark. In particular the Complainant has registered the GMAIL Mark in Australia since April 4, 2005 (trade mark number 1049129 for services in class 38).

The Domain Name, <gmailsupportnumberaustralia.com.au>, was registered on January 27, 2017 and redirects to a website which purports to offer technical support to users of the Complainant's Gmail product (the "Respondent's Website").

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant's GMAIL Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is subsequently being used in bad faith.

The Complainant is the owner of the GMAIL Mark, having registered this mark in numerous jurisdictions. The Domain Name is confusingly similar to the GMAIL Mark, incorporating the GMAIL Mark in its entirety with the addition of the descriptive terms "support", "number" and "australia", which merely confirm the confusing similarity since they describe the technical support services offered by the Complainant under the GMAIL Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name. The Respondent has no licence or right to use the Domain Name and has never been granted any permission by the Complainant for the registration of the Domain Name. The Respondent is not making a bona fide offering of goods and services from the Domain Name or making a legitimate or noncommercial or fair use of the Domain Name; rather the Respondent sells personal information collected from the misdirected users, including confidential Gmail passwords, to third parties. Even if this were not the case, the Respondent is also attempting to pass itself off as the Complainant or being connected to the Complainant, which is not the case.

The Domain Name was registered and is being used in bad faith. The GMAIL Mark is well known in Australia and it is inconceivable that the Respondent was unaware of the mark when the Domain Name was registered. The Domain Name is purportedly used as part of a scheme where the Respondent collects and then sells personal information from misdirected users, which amounts to bad faith registration and use.

B. Respondent

On March 22, 2018 and April 11, 2018, the Respondent sent two emails to the Center. They are reproduced in their entirety below.

"This domain can be given to the complainant as we are not intended to harm the reputation of anyone and we too respect copyrights and intellectual property rights."

"is there any purpose of doing so when we are ready to transfer domain to complainant? Please advice if I should share domain transfer key here so that transfer can be done smoothly." 1

6. Discussion and Findings

A. Consent to Transfer

The Respondent has, in two separate emails, consented to the transfer of the Domain Name to the Complainant. The auDA Overview of Panel Views on Selected auDRP Questions, First Edition, section 4.13, states, in response to the question "Can a panel decide a case under the auDRP based on a respondent's consent to transfer?" that:

"The general position is the same as that under the UDRP.

Where a respondent has stated, either in its response or some other communication to the panel, that it consents to a transfer of a domain name, auDRP panels have given effect to this by ordering transfer without consideration of whether the paragraph 4(a) requirements of the Policy are satisfied. For this to occur, the respondent's consent to transfer must be genuine, unconditional and unilateral. Where the consent to transfer is conditional – e.g., in return for payment of a fee – panels generally proceed to consider the merits of the complaint."

The Panel is satisfied that the Respondent has provided a genuine, unconditional and unilateral consent to the transfer of the Domain Name to the Complainant and the Panel so orders the transfer of the Domain Name to the Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders, without making any findings adverse to the Respondent, that the Domain Name <gmailsupportnumberaustralia.com.au> be transferred to the Complainant.2

Nicholas Smith
Sole Panelist
Date: April 27, 2018

1 The Respondent's second email of April 11, 2018 was sent in response to the Center's email of April 10, 2018, which informed the Parties that the Center would proceed to commence panel appointment.

2 The Complainant has requested transfer of the Domain Name. Given that the Complainant is the owner of an Australian registered trade mark that appears to be closely and substantially connected to the Domain Name, in that the Domain Name reproduces the GMAIL Mark in its entirety with the addition of terms descriptive of the Complainant's services under the GMAIL Mark, the Complainant appears to satisfy the eligibility requirements for registration of the Domain Name.

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