Google Inc. v. ivan dudik / Den Deripaska / ivaan duadik / dims inanaev / ivania darus / ivan duos
Claim Number: FA1210001468165
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is ivan dudik / Den Deripaska / ivaan duadik / dims inanaev / ivania darus / ivan duos (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adnoidmarket.net>, <androidfo.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <android-markket.net>, <androiidmarket.com>, <androldmarket.com>, and <androld-market.com>, registered with Internet.Bs Corp.
The undersigned certifies he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2012; the National Arbitration Forum received payment on October 22, 2012.
On October 22, 2012, Internet.Bs Corp confirmed by e-mail to the National Arbitration Forum that the <adnoidmarket.net>, <androidfo.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <android-markket.net>, <androiidmarket.com>, <androldmarket.com>, and <androld-market.com> domain names are registered with Internet.Bs Corp and that Respondent is the current registrant of the names. Internet.Bs Corp has verified that Respondent is bound by the Internet.Bs Corp 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 October 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2012 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@adnoidmarket.net, postmaster@androidfo.net, postmaster@android-free-market.com, postmaster@android-free-markets.com, postmaster@androidimarket.com, postmaster@android-markket.net, postmaster@androiidmarket.com, postmaster@androldmarket.com, and postmaster@androld-market.com. Also on October 29, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant claims the entities which control the domain names at issue are effectively controlled by the same person and/or entity and operates under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends Respondent registered the domain names under numerous aliases to avoid detection and make transfer more difficult. Complainant presents a chart summarizing the registration information for each disputed domain name:
WHOIS information summary:
ADNOIDMARKET.NET
ivan dudik gaxin gal 63
653398 Duros
Russia
61.7656999
swsdwea66@gmail.com
ANDROIDFO.NET
ivan dudik gaxin gal 63
653398 Duros
Russia
61.7656999
swdsdsa66@gmail.com
ANDROID-FREE- MARKET.COM
Den
Deripaska Koasan R
231001 Rio
Brazil
55.921001
info@android-free- market.com
ANDROID-FREE- MARKETS.COM
Den
Deripaska Koasan R
231001 Rio
Brazil
55.921001
support@android-free- markets.com
ANDROIDIMARKET.COM
ivaan duadik gaxin gal 63
653398 Duros
Russia
61.7656999
swdasdsa66@gmail.com
ANDROID-MARKKET.NET
ivan dudik gaxin gal 63
653398 Duros
Russia
61.7656999
s432sdsa66@gmail.com
ANDROIIDMARKET.COM
dims inanaev egaxin gal 63
653398
Durose
Russia
61.7656999
mesra42232@gmail.com
ANDROLDMARKET.COM
ivania darus gaxin gal 631
653395
Duro3s
Russia
61.7656999
mymobilityvorl@gmail.com
ANDROLD-MARKET.COM
ivan duos gaxiwn gal 63
653398
Durosw
Russia
61.7656999
sw6r6ssdw@gmail.com
The chart indicates the addresses listed in the WHOIS records for the <adnoidmarket.net>, <androidfo.net>, <androidimarket.com>, <android-markket.net>, <androiidmarket.com>, <androldmarket.com>, and <androld-market.com> domain names are either the same or very similar and the telephone numbers are the same. Complainant also contends, while the <android-free-market.com> and <android-free-markets.com> domain names are registered to “Den Deripaska,” an individual with a purported Brazilian address instead of the above-mentioned Russian address, all of the domain names share key identifying characteristics, including the following:
a) They all forward traffic through the same IP address;
b) They all share the same ISP Name and Name Servers; and
c) They all share the same ISP Geolocation (meaning that the Internet connections associated with the domain names share the same physical location).
While this could all be a coincidence, Respondent has not claimed otherwise.
The Panel finds Complainant has presented sufficient evidence to make a prima facie finding the disputed domain names are controlled by the same entity and chooses to proceed with this UDRP proceeding.
A. Complainant
A. Google and the ANDROID Mark
10. Google is a Delaware corporation located in Mountain View, California created in 1997. Google is renowned for its search engine services offered under the GOOGLE mark, and also offers a broad variety of related technological and mobile products and services.
11. Since 2007, Google has offered a software platform and operating system under the ANDROID Mark. Android is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices. Third-party developers create applications for the Android platform that are available for users to download and purchase from Google.
12. Applications, media, and content compatible with the Android platform are available for download through Android devices and the internet, and Google launched its Android Market as a forum for delivering that content in 2008.
13. The Android Market allowed users to browse and download applications and digital content for use on the Android platform. In March 2012, Google announced that it was expanding its Android Market offerings and rebranding Android Market as GOOGLE PLAY.
14. As the popularity of the Android platform has grown among device manufacturers, the number of applications available for Android has increased dramatically. As of February 2011, more than 150,000 applications were available on the Android platform. That number continues to grow exponentially; by September 2012, more than 675,000 applications were available through Google for Android devices.
15. The Android platform has met with resounding success in the marketplace and has quickly increased its share of the mobile and personal device markets. In February 2010, there were approximately 60,000 daily activations of ANDROID-supported devices. That number has since grown to more than 1.3 million daily ANDROID device activations. According to comScore, as of May 2012, the ANDROID platform was installed on 50.9% of all active smartphones in the United States, more than any other mobile operating system.
16. Google owns United States and foreign applications and registrations for the ANDROID Mark dating back to as early as 2007. Each application and registration is in good standing and valid.
17. Google has expended substantial resources promoting the ANDROID Mark and its associated products and services. The ANDROID Mark embodies the substantial and valuable reputation and goodwill that Google has earned in the marketplace for its high quality software and related products and services.
18. In addition to Google’s advertising efforts, the Android platform and Android Market have been the subject of thousands of unsolicited stories in the media, highlighting Google’s innovative and successful open source software platform.
19. As a result of Google’s widespread use of the ANDROID Mark, its extensive advertising and promotion of the platform, and the continuous and unsolicited media coverage it has received, as well as the high degree of consumer recognition of the ANDROID Mark, and the strong and loyal base of ANDROID customers, the ANDROID Mark is famous.
B. Respondent and the Domain Names
20. Respondent registered the Domain Names on the following dates:
Domain Name Registration Date
ADNOIDMARKET.NET February 10, 2012
ANDROIDFO.NET February 27, 2012
ANDROID-FREE-MARKET.COM March 9, 2012
ANDROID-FREE-MARKETS.COM March 22, 2012
ANDROIDIMARKET.COM December 25, 2011
ANDROID-MARKKET.NET February 14, 2012
ANDROIIDMARKET.COM January 8, 2012
ANDROLDMARKET.COM December 18, 2011
ANDROLD-MARKET.COM December 9, 2011
21. Complainant asserts that Respondent registered the Domain Names under numerous registrant names in an effort to avoid detection and transfer.
22. Complainant asserts pursuant to NAF Supplemental Rule 4(e) that there is a unity of ownership and control over the Domain Names to support a finding that they are registered to the same individual, that they should be included in one proceeding, and that a decision should be rendered as to all of the Domain Names.
23. The Domain Names ANDROIIDMARKET.COM, ADNOIDMARKET.NET, ANDROIDFO.NET, ANDROIDIMARKET.COM, ANDROID-MARKKET.NET, ANDROLDMARKET.COM and ANDROLD-MARKET.COM share the same or very similar addresses in Russia and the same telephone number. This evidence is sufficient to justify the conclusion that the listed aliases identify the same person. Yahoo!, Inc. v. Soksripanich & Others, D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent where the administrative contact information of the various subject domain names was the same or similar).
24. Moreover, while two of the Domain Names, ANDROID-FREE-MARKET.COM and ANDROID-FREE-MARKETS.COM, are registered to Den Deripaska, an individual with a purported Brazilian address, all of the Domain Names share key identifying characteristics. Specifically, as set forth in Table B below, all of the Domain Names: (1) forward traffic through the same IP address; (2) share the same ISP Name and Name Servers; and (3) share the same ISP Geolocation, meaning that the internet connections associated with the Domain Names share the same physical location.
ADNOIDMARKET.NET
ivan dudik
93.170.107.206
RIPE Network Coordination Centre
Amsterdam, NL
ns4.wapsyst.biz, ns3.wapsyst.biz
ANDROIDFO.NET
ivan dudik
93.170.107.206
RIPE Network Coordination Centre
Amsterdam, NL
ns4.wapsyst.biz, ns3.wapsyst.biz
ANDROID-FREE- MARKET.COM
Den Deripaska
93.170.107.206
RIPE Network Coordination Centre
Amsterdam, NL
ns4.wapsyst.biz, ns3.wapsyst.biz
ANDROID-FREE- MARKETS.COM
Den Deripaska
93.170.107.206 RIPE Network Coordination Centre
Amsterdam, NL
ns4.wapsyst.biz, ns3.wapsyst.biz
ANDROIDIMARKET.COM
ivaan duadik
93.170.107.206
RIPE Network Coordination Centre
Amsterdam, NL
ns4.wapsyst.biz, ns3.wapsyst.biz
ANDROID- MARKKET.NET
ivan dudik
93.170.107.206
RIPE Network Coordination Centre
Amsterdam, NL
ns4.wapsyst.biz, ns3.wapsyst.biz
ANDROIIDMARKET.COM
dims inanaev
93.170.107.206
RIPE Network Coordination Centre
Amsterdam, NL
ns4.wapsyst.biz, ns3.wapsyst.biz
ANDROLDMARKET.COM
ivania darus
93.170.107.206
RIPE Network Coordination Centre
Amsterdam, NL
ns4.wapsyst.biz, ns3.wapsyst.biz
ANDROLD- MARKET.COM
ivan duos
93.170.107.206
RIPE Network Coordination Centre
Amsterdam, NL
ns4.wapsyst.biz, ns3.wapsyst.biz
25. These facts indicate that Respondent is a single respondent operating under various aliases identified in the Complaint. See, e.g., Swatch AG / The Swatch Group LTD v. Derek Odum / Derek A. Odum / Jeffrey Lambert / Jeffrey M. Lambert, FA1206001450983 (Nat. Arb. Forum Aug. 15, 2012) (finding evidence sufficient to enable decision that it is more likely than not that the disputed domain names were controlled by the same entity where “both domains have the same mail server and IP address”); CafePress.com, Inc. v. Dangelo Delicious a/k/a Amelie Nikita a/k/a Martin Faith a/k/a Jameson c/o Damiana a/k/a Roger Anise a/k/a Logan Feather a/k/a Rebekah Topaz a/k/a Noe Bird a/k/a Finley Traci a/k/a Anna Renee, FA0810001231366 (Nat. Arb. Forum Dec. 30, 2008) (finding evidence sufficient to justify conclusion that aliases identify the same person or entity where “all of the[] domains list the same domain name servers”); Shutterfly.com, Inc. v. Carla Douglas a/k/a Dave Smith a/k/a Ted Spencer a/k/a Jen Hansen a/k/a Nick Jones a/k/a Carla Williams a/k/a Chris Hansen a/k/a Chris Rogers a/k/a Ted Smith a/k/a Dave White a/k/a Joe Jackson a/k/a Joe Williams a/k/a Nick White a/k/a Dave Rogers a/k/a Gideon Blair a/k/a Carla Rogers a/k/a Ted Rogers a/k/a Dave Spencer a/k/a Carla Hansen a/k/a Ted Stern a/k/a Jan Jones a/k/a Jacob Sheppard a/k/a Lisa Durham a/k/a Dave Jackson a/k/a Nick Jones a/k/a Joe Stern a/k/a Ted Williams a/k/a Yazmin Wheeler a/k/a Dave Stern a/k/a Ted Douglas a/k/a Mike Hansen a/k/a Jan White a/k/a Ted Jones a/k/a Carla Smith a/k/a Jen Rogers a/k/a Mike Smith a/k/a Mike Douglas a/k/a Joe Douglas a/k/a Taylor Nash, FA0801001141116 (Nat. Arb. Forum Mar. 25, 2008) (finding listed aliases to be the same person or entity where “the disputed domain names forward traffic through the same software mechanism and IP address”).
26. Likewise, the websites to which the Domain Names resolve are registered with the same registrar, Internet.bs, and feature similar content:
a. The Domain Names ANDROIDFO.NET and ANDROID-MARKKET.NET resolve to http://www.aaacredit.net/, a website featuring a business called “AAA Credit Screening Services,” and advertising “Quick Online Background Checks,” along with other credit- related services.
b. The Domain Name ANDROLD-MARKET.COM resolves to a website blocked by anti- virus software due to the presence of “Malicious Software.”
c. The remaining Domain Names, ANDROIIDMARKET.COM, ADNOIDMARKET.NET, ANDROIDIMARKET.COM, ANDROLD-MARKET.COM, ANDROID-FREE- MARKET.COM, and ANDROID-FREE-MARKETS.COM resolve to websites identified as “Phishing URL[s]” and blocked by anti-virus software.
27. Evidence supporting a finding of common ownership includes that the Domain Names are registered through the same registrar and the Domain Names redirect to the same content. See Fitness Anywhere LLC v. Jack Chiang, et al., FA1106001395271 (Nat. Arb. Forum July 27, 2011) (“Given that the domain names all point to the same website . . . the Panel holds that all the domain names are registered by the same domain name holder.”); accord Digi-Key Corp. v. Annie Brown, et al., FA1105001390069 (Nat. Arb. Forum Jul. 6, 2011) (finding common ownership notwithstanding that domains were registered to different individuals, due in part to use of same registrar, similarities in WHOIS information, and redirection of the domains to the same content).
28. The Rules provide that a Complaint may relate to more than one domain name as long as the domain names are registered by the same domain-name holder. In situations such as this, where it is clear that the same individual or entity is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registration names. See Adobe Systems Incorporated v. Domain Oz, Case No. D2000-0057 (WIPO March 22, 2000) (domains registered to multiple names found to be held by a single entity); Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., Case No. D2003-0283 (WIPO July 3, 2003) (same).
LEGAL GROUNDS
This Complaint is based on the following legal grounds.
A. Likelihood of Confusion—ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
29. Google has used the ANDROID Mark since well prior to December 9, 2011, the earliest registration date of any of the Domain Names. Indeed, Google owns registrations for the ANDROID Mark that issued well prior to that date. These filings remain valid and in force. In light of these filings and Google’s substantial and exclusive use of the ANDROID Mark, Google owns protectable rights in the Mark that predate the registration date of the Domain Names. See, e.g., Google Inc. v. Smith Smithers, FA0610000826563 (Nat. Arb. Forum Dec. 7, 2006) (“Although [r]espondent’s registration of the [disputed domain names] predate [sic] Complainant’s USPTO registration, Complainant’s filing date of September 16, 1998 predates [r]espondent’s registration [which] sufficiently establishes rights in the GOOGLE Mark.”); see also Trendwest Resorts, Inc. v. Tisdel, D2001-0987 (WIPO Oct. 24, 2001) (“The Policy does not require a service mark to be registered by a governmental authority for the Complainant to have rights in the mark. Complainant may have established common law rights in the mark prior to Respondent’s domain name registration.”); Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where use was continuous, ongoing, and secondary meaning was established).
30. A domain name can be found to be identical or confusingly similar to a complainant’s mark where it merely interchanges or replaces letters in order to create confusion. See Urtici Kargo Servisi A.S. v. Yurticikargo Yurticikargo, D2003-0707 (WIPO Oct. 24, 2003). Here, the Domain Names ADNOIDMARKET.NET, ANDROIDFO.NET, ANDROIDIMARKET.COM, ANDROIIDMARKET.COM, ANDROLDMARKET.COM and ANDROLD-MARKET.COM merely transpose, add to, or delete letters from the famous ANDROID Mark. Those modifications do not create recognized terms and appear intended to capitalize on common user misspellings or typographical errors. As such, the Domain Names are confusingly similar to the ANDROID Mark. See Victoria’s Secret v. Zuccarini, FA0010000095762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters to words did not create a distinct mark and rendered domain names confusingly similar to Complainant’s marks); DaimlerChrysler Corporation v. Worshiping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, D2000-1272 (WIPO Dec. 19, 2000) (“The registration of the domain name[] appears to serve no other purpose other than to capture the user who mistakenly or inadvertently enters an incorrectly spelled version of the Complainant’s registered trademark when he or she is attempting to access the Complainant’s web-site.”).
31. A domain name registrant may not avoid likely confusion by simply adding a non-distinctive term to another’s mark. See, e.g., Google Inc. v. Kun Zhang, FA0901001245131 (Nat’l Arb. Forum Mar. 13, 2009) (holding the “addition of generic terms to a famous mark is insufficient to diminish the confusingly similar nature” of the domain name googlevideodownload.com); Google Inc. v. Babaian, FA0708001060992 (Nat’l Arb. Forum Oct. 1, 2007) (finding that where the registrant merely added of “generic words [like] ‘web,’ ‘data,’ ‘drive,’ and ‘storage’ that have an obvious relationship to [Google’s] business,” the domain names are confusingly similar under Policy ¶4(a)(i)).
32. In this instance, the Domain Names ANDROID-MARKKET.NET, ANDROID-FREE- MARKET.COM and ANDROID-FREE-MARKETS.COM merely add the non-distinctive terms “free,” “market” and the misspelled variant “markket” to the ANDROID Mark. Regardless of the reason for their inclusion in these Domain Names, the fame of the distinctive ANDROID Mark and the non-distinctiveness of the added terms will cause users encountering these Domain Names to mistakenly believe they originate from, are associated with, or are sponsored by Google.
33. As such, the Domain Names are nearly identical and confusingly similar to the ANDROID Mark.
B. No Rights or Legitimate Interests—ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
34. As Panels have noted in evaluating infringing GOOGLE-formative domains, any “[r]espondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.” Google Inc. v. Mikel M Frieje, FA011000102609 (Nat. Arb. Forum Jan. 11, 2002).
35. Likewise, given the national prominence and growing omnipresence of the ANDROID platform, and Respondent’s current activities under the Domain Names, Respondent is undoubtedly familiar with the ANDROID Mark.
36. On information and belief, Respondent is not commonly known as the Domain Names or any name containing Complainant’s ANDROID Mark. Respondent’s WHOIS information in connection with the Domain Names makes no mention of the Domain Names or the ANDROID Mark as Respondent’s name or nickname. A registrant may be found to lack any right or legitimate interest in a domain name where there is no indication it is known by that name. See Popular Enterprises, LLC v. Sung-a Jang, FA0610000811921 (Nat. Arb. Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”).
37. Complainant has not authorized or licensed Respondent to use any of its trademarks in any way. Unlicensed, unauthorized use of domains incorporating a complainant’s trademark is strong evidence that Respondent has no rights or legitimate interest in the domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA0709001076561 (Oct. 26,
2007).
38. The Domain Names ADNOIDMARKET.NET, ANDROIDFO.NET, ANDROIDIMARKET.COM, ANDROID-MARKKET.NET, ANDROIIDMARKET.COM, ANDROLDMARKET.COM and ANDROLD-MARKET.COM are examples of typosquatting, “a process in which a domain name registrant attempts to register a confusingly similar domain name that differs from a protected mark only slightly by taking advantage of common typing errors.” Time Warner Inc. v. Zone MP3, FA0706001008035 (Nat. Arb. Forum July 25, 2007). The “practice of typosquatting demonstrates a lack of rights or legitimate interests pursuant to Policy ¶4(a)(ii).” Id.; accord IndyMac Bank F.S.B. v. Ebeyer, FA0307000175292 (Nat. Arb. Forum Sept. 19, 2003) (finding respondent lacked rights and legitimate interests in disputed domain names due to his addition of mere typographical errors to the domain names).
39. Furthermore, the Domain Names ANDROIDFO.NET and ANDROID-MARKKET.NET currently resolve to a commercial website offering credit-related services. “Respondent is therefore commercially benefiting from the use of Complainant’s mark in its domain name. This type of use is not considered to be in relation to a bona fide offering of goods or services 4(c)(iii).” G.D. Searle & Co. v. Fred Pelham, FA0208000117911 (Nat. Arb. Forum Sep. 19, 2002); see also Bank of Am. Corp. v. Northwest Free Community Access, FA0308000180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
40. Finally, the Domain Name ANDROLD-MARKET.COM resolves to a website that, according to anti-virus software, attempts to download malware onto a user’s computer. This is not a “bona fide offering of goods or services . . . or a legitimate noncommercial use.” Dell Inc. v. Versata Software, Inc. c/o Versata Hostmaster, FA0902001246916 (Nat. Arb. Forum, Apr. 10, 2009) (citing Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum Jul. 5, 2005) for the proposition that “respondent’s use of the disputed domain name, which attempted to download malicious computer software onto Internet users’ computers, was not a bona fide offering of goods or services . . . or a legitimate noncommercial or fair use.”).
41. Thus, Respondent lacks any right or legitimate interest in the Domain Names.
C. Bad Faith—ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
42. The evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Names in bad faith. The fame and unique qualities of the ANDROID Mark, which were adopted by Complainant prior to the registration of the Domain Names, make it extremely unlikely that Respondent created the Domain Names independently. Respondent’s willful intent to violate Google’s intellectual property rights is further exhibited by the inclusion of the entire Mark in a number of the Domain Names. See, e.g., The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (Nat. Arb. Forum Jul. 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”).
43. Moreover, even constructive knowledge of famous marks like ANDROID is sufficient to establish registration in bad faith. See Google v. Abercrombie 1, FA0111000101579 (Nat. Arb. Forum Dec. 10, 2001) (“Because of the famous and distinctive nature of Complainant’s GOOGLE Mark, [r]espondent is thought to have been on notice of the existence of Complainant’s mark at the time [r]espondent registered the infringing [domain name googld.com].”).
44. Likewise, where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used . . . its domain names 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., D2006-1052 (WIPO Oct. 11, 2006).
ANDROID-MARKKET.NET to offer a commercial website providing credit-related services also constitutes bad faith use and registration. G.D. Searle & Co. v. Fred Pelham, FA0208000117911 (Nat. Arb. Forum Sep. 19, 2002) (finding bad faith registration and use where respondent was “selling prescription drugs over the Internet” and was “commercially benefiting [from] the likelihood of confusion its . . . domain name [was] creating”); see also National Academy of Recording Arts & Sciences, Inc. v. zhiqiang li, FA1112001421431 (Nat. Arb. Forum Feb. 9, 2012) (finding bad faith registration and use under Policy ¶4(b)(iv) where respondent’s website <grammytimes.com>, which offered for sale imitation dresses worn by celebrities, did “not compete with any of the products or services offered by Complainant,” but instead “commercially benefit[ed] from increased Internet traffic” resulting from “confusion as to Complainant’s affiliation with the resolving website”).
46. Moreover, bad faith registration and use is established where, as here, the Domain Name ANDROLD-MARKET.COM “resolve[s] to a corrupted website that contains viruses.” See, e.g., Top Rx, Inc. v. Saravanan Hoxworth, FA1204001440420 (Nat. Arb. Forum Jun. 12, 2012) (“The Panel also finds that maintaining a website that distributes a virus or malware to Internet users’ computers is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”).
47. Respondent’s registration of nine domain names that are similar or identical to Google’s ANDROID Mark is additional, strong evidence that it registered and is using the Domain Names in bad faith. See eBay Inc. v. SGR Enterprises and Joyce Ayers, D2001-0259 (Apr. 11, 2001) (“Ownership of numerous domain names that correspond to the names or marks of well known business entities suggests intent to profit from the activities of others. Respondents’ practice of registering domain names containing the trademarks of other companies . . . supports a finding that the contested domain names were registered and are using in bad faith.”); accord Société BIC v. LaPorte Holdings, LLC, D2005-0342 (June 16, 2005).
48. Finally, Respondent has failed to list accurate contact information – and in particular, a working telephone number – in the WHOIS record for the Domain Names, in violation of section 3.7.7.2 of the ICANN Registrar Accreditation Agreement. Respondent’s intentional concealment of his identity further establishes that his registration and use of the Domain Name is in bad faith. See Yahoo!, Inc. v. Eitan Zviely D2000-0273 (WIPO June 14, 2000) (finding that “[Respondent’s] registration under phony names” constitutes bad faith registration and use); Salomon Smith Barney Inc. v. Salomon Internet Services, D2000-0668 (WIPO Sept.
4, 2000) (finding bad faith use and registration where Respondent had “taken steps to conceal its true identity”).
49. Accordingly, Respondent has registered and is using the Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 some of the domain names (but not all); and
(3) Some of the domain names (but not all) have 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."
Paragraph 4(a) of the Policy requires Complainant to prove three elements to obtain an order cancelling or transferring a domain name:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the ANDROID mark. Complainant offers a software platform and operating system under the mark. Complainant provided evidence Complainant is the owner of numerous registrations for the ANDROID mark around the world, including with the following trademark authorities:
a) IPAustralia (Reg. No. 1,208,628 registered January 15, 2009);
b) SAIC (e.g., Reg. No. 6,363,165 registered March 28, 2010);
c) KIPO (Reg. No. 40-759375 registered September 1, 2008);
d) IPONZ (e.g., Reg. No. 798,638 registered November 7, 2008); and
e) UKIPO (Reg. No. 2,530,935 registered April 23, 2010).
Panels have held that, regardless of the location of the parties in relation to the countries where the mark is registered, registration of a mark is normally adequate evidence of rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds Complainant has rights in the ANDROID mark pursuant to Policy ¶4(a)(i).
Complainant contends the <adnoidmarket.net>, <androidfo.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <android-markket.net>, <androiidmarket.com>, <androldmarket.com>, and <androld-market.com> domain names are confusingly similar to the ANDROID mark. Complainant notes Respondent makes one or more of the following changes to the ANDROID mark in each of the disputed domain names:
a) the addition of a hyphen(s);
b) the addition of one or more generic terms;
c) the addition of one or more letters;
d) the slight misspelling of the mark by adding, deleting, or transposing letters; and
e) the addition of a generic top-level domain (“gTLD”), either “.com” or “.net.”
A gTLD must be disregarded when comparing a mark to a domain name because gTLDs are required by domain name syntax. To hold otherwise would eviscerate the UDRP. Panels have held the addition of letters or generic terms fails to move a domain name outside of the realm of confusing similarity. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). This Panel concurs. Finally, this Panel finds the slight misspelling of a mark in a domain name by adding, deleting, or transposing letters does not sufficiently differentiate the domain names from Complainant’s mark under Policy ¶4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). Therefore, the Panel finds Respondent’s <adnoidmarket.net>, <androidfo.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <android-markket.net>, <androiidmarket.com>, <androldmarket.com>, and <androld-market.com> domain names are confusingly similar to Complainant’s ANDROID mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). The burden then shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <adnoidmarket.net>, <androidfo.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <android-markket.net>, <androiidmarket.com>, <androldmarket.com>, and <androld-market.com> domain names. Complainant notes the WHOIS records for the disputed domain names make no mention of the domain names, the ANDROID mark, or any variation of thereof. The WHOIS records for the disputed domain names list “ivan dudik / Den Deripaska / ivaan duadik / dims inanaev / ivania darus / ivan duos” as the domain name registrants. Complainant claims it has not authorized or licensed Respondent to use the ANDROID mark in any way. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends the <androidfo.net> and <android-markket.net> domain names are not being used for a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant asserts that the <androidfo.net> and <android-markket.net> domain names resolve to the website at <aaacredit.net>, a website featuring a business called “AAA Credit Screening Services” which advertises “Quick Online Background Checks” along with other credit-related services. This Panel respectfully disagrees with Complainant on this point. Complainant has not claimed the services are not being provided. Complainant has not claimed confusion. Complainant has not claimed its business is being disrupted. While the Panel could construct arguments on this point for Complainant, it declines to do so. If Complainant could have made the arguments in good faith, it would have done so.
Complainant next alleges Respondent’s lack of rights and legitimate interests in the <androld-market.com> domain name is evidenced by its use. The <androld-market.com> domain name resolves to a website blocked by anti-virus software due to the presence of malicious software. In Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005), the panel held that the use of a domain name to host malware makes obvious that the respondent does not have rights or legitimate interests in the disputed domain name. This Panel agrees and finds Respondent is using the <androld-market.com> domain name for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶4(a)(i).
Regarding the <adnoidmarket.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <androiidmarket.com>, and <androldmarket.com> domain names, Complainant claims Respondent’s use of them makes clear its lack of rights and legitimate interests. The <adnoidmarket.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <androiidmarket.com>, and <androldmarket.com> domain names resolve to websites blocked by anti-virus software due to classification as “phishing URLs.” This Panel agrees and finds Respondent use of the <adnoidmarket.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <androiidmarket.com>,and <androldmarket.com>, domain names is neither a Policy ¶¶4(c)(i) or 4(c)(iii) bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii) PARTIALLY satisfied.
Complainant claims the <androidfo.net> and <android-markket.net> domain names were registered and are used in bad faith. Complainant claims the <androidfo.net> and <android-markket.net> domain names are being used to offer a commercial website providing credit-related services. Complainant states the <androidfo.net> and <android-markket.net> domain names resolves to the website at <aaacredit.net>, a website featuring a business called “AAA Credit Screening Services” which advertises “Quick Online Background Checks” along with other credit-related services. Complainant has not submitted sufficient evidence nor legal argument for this Panel to conclude Respondent registered and uses these domain names in bad faith.
Complainant claims the <androld-market.com> domain name is registered and being used in bad faith. Complainant argues the <androld-market.com> domain name resolves to a corrupted website containing malicious viruses. In Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010), the panel determined that such a use of a disputed domain name evidenced bad faith. This Panel concurs and finds Respondent’s registration and use of the <androld-market.com> domain name was in bad faith under Policy ¶4(a)(iii).
Next, Complainant claims the <adnoidmarket.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <androiidmarket.com>, and <androldmarket.com> domain names were registered and are being used in bad faith. The <adnoidmarket.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <androiidmarket.com>, and <androldmarket.com> domain names resolve to websites identified as phishing sites by Complainant’s anti-virus software. Panels have found that attempting to trick Internet users into providing personal and financial information is evidence of bad faith. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). This Panel agrees and finds Respondent’s registration and use of the <adnoidmarket.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <androiidmarket.com>, and <androldmarket.com> domain names was in bad faith pursuant to Policy ¶4(a)(iii).
Lastly, Complainant argues the <adnoidmarket.net>, <androidfo.net>,<androidimarket.com>, <android-markket.net>, <androiidmarket.com>, <androldmarket.com>, and <androld-market.com> domain names are typosquatted versions of the ANDROID mark. Typosquatting does not constitute a ground (without more) for finding bad faith under the UDRP. While Respondent may well have infringed upon Complainant’s mark, that question is beyond the Panel’s jurisdiction.
The Panel finds Policy ¶4(a)(iii) PARTIALLY satisfied.
Having established all three elements required under the ICANN Policy only for some domain names, the Panel concludes relief shall be PARTIALLY GRANTED and PARTIALLY DENIED.
Accordingly, it is Ordered the <adnoidmarket.net>, <android-free-market.com>, <android-free-markets.com>, <androidimarket.com>, <androiidmarket.com>, <androldmarket.com>, and <androld-market.com> domain names be TRANSFERRED from Respondent to Complainant.
It is further Ordered the <androidfo.net> and <android-markket.net> domain names REMAIN WITH Respondent. This order is made without prejudice to Complainant being able to bring another proceeding regarding these domain names.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 5, 2012
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