Google Inc. v. Fundacion Private Whois / Domain Administrator; mihail efremov; Aleksandr V Malkov / Private Person; Vadim V Sakhnik / N/A; N/A / Warik3 Warik3; Privat Person / Ivan Palkin; N/A / Anastasiya Bubina; Kolya Bokov
Claim Number: FA1211001470887
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Fundacion Private Whois / Domain Administrator; mihail efremov; Aleksandr V Malkov / Private Person; Vadim V Sakhnik / N/A; N/A / Warik3 Warik3; Privat Person / Ivan Palkin; N/A / Anastasiya Bubina; Kolya Bokov (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue <androidgoogle4.com>, <androidreservoir.com>, <androidmass.com>, <android-downloader.org>, <android-com-ru.com>, <google-androidplays.com>,
<android-market-ru.com>, and <android-googleplay.net>, are registered with PDR Ltd. d/b/a Publicdomainregistry.com.
The domain name at issue <androidovod.com>, is registered with Domaincontext, Inc.
The domain names at issue <android-market-mobile.com>, <android-markurs.com>, <android-marrket.com>, <androidxmarket.net>, <google-plays.biz>, <google-plays.net>, <gplay-games.net>, <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com>, <android48.net>, <android4imarket.com>, <android8market.com>, <androidermarketis.net>, <androidermarkets.net>, <android-imarket.net>, and <androidmarkef.net>, are registered with Internet.bs Corp.
The domain names at issue <android-777.info>, <android555.info>, <android111.info>, <android-222.info>, <android333.info>, <android444.info>, <android-stat.info>, and <android-stat1.info>, are registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2012; the National Arbitration Forum received payment on November 13, 2012.
On November 14, 2012, PDR Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <android-com-ru.com>, <androidgoogle4.com>, <google-androidplays.com>, <android-market-ru.com>, <androidmass.com>, <androidreservoir.com>, <android-downloader.org>, and <android-googleplay.net> domain names are registered with PDR Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a Publicdomainregistry.com 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 November 27, 2012, Domaincontext, Inc. confirmed by e-mail to the National Arbitration Forum that the <androidovod.com> domain name is registered with Domaincontext, Inc. and that Respondent is the current registrant of the name. Domaincontext, Inc. has verified that Respondent is bound by the Domaincontext, Inc. 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 November 14, 2012, Internet.bs Corp confirmed by e-mail to the National Arbitration Forum that the <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com>, <android48.net>, <android4imarket.com>, <android8market.com>, <androidermarketis.net>, <androidermarkets.net>, <android-imarket.net>, <androidmarkef.net>, <android-market-mobile.com>, <android-markurs.com>, <android-marrket.com>, <androidxmarket.net>, <google-plays.biz>, <google-plays.net>, and <gplay-games.net> 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 November 14, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <android-stat1.info>, <android-stat.info>, <android333.info>, <android-222.info>, <android444.info>, <android111.info>, <android-777.info>, <android555.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2013 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@android-com-ru.com, postmaster@androidgoogle4.com, postmaster@google-androidplays.com, postmaster@androidovod.com, postmaster@android-market-ru.com, postmaster@adnoidmarket.com, postmaster@andiodmarket.com, postmaster@androibmarket.com, postmaster@android48.net, postmaster@android4imarket.com, postmaster@android8market.com, postmaster@androidermarketis.net, postmaster@androidermarkets.net, postmaster@android-imarket.net, postmaster@androidmarkef.net, postmaster@android-market-mobile.com, postmaster@android-markurs.com, postmaster@android-marrket.com, postmaster@androidxmarket.net, postmaster@google-plays.biz, postmaster@google-plays.net, postmaster@gplay-games.net, postmaster@android-stat.info, postmaster@android-stat1.info, postmaster@android111.info, postmaster@android-222.info, postmaster@android333.info, postmaster@android444.info, postmaster@android555.info, postmaster@android-777.info, postmaster@android-downloader.org, postmaster@androidmass.com, postmaster@androidreservoir.com, and postmaster@android-googleplay.net. Also on May 6, 2013, 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 May 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
1. Complainant, Google Inc., is renowned for its search engines offered under the GOOGLE mark, and also offers a broad variety of related technological and mobile products and services. Since 2007, Complainant has offered a software platform and operating system under the ANDROID mark.
2. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004), as well as other registrations around the world. Complainant is the owner of registrations throughout the world, such as with the Intellectual Property Office of Singapore (“IPOS”) for the ANDROID mark (e.g., Reg. No. T0721530I Nov. 6, 2007).
3. 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. A domain name registrant may also not avoid likely confusion by simply adding a descriptive or non-descriptive term to another’s mark.
4. Respondent has no rights or legitimate interests in the disputed domain names.
i. Respondent is not commonly known as the domain names or any name containing Complainant’s GOOGLE or ANDROID marks.
ii. Respondent is operating websites that provide unauthorized ANDROID applications in direct competition with those offered by Complainant. Some of the domain names have been identified by anti-virus software as “phishing URLs.” Some of the domain names at issue do not resolve to an active page. Some of the domain names resolve to a website that, according to anti-virus software, attempts to download malware onto a user’s computer.
iii. A number of domain names are also examples of typosquatting.
5. Respondent registered and is using the disputed domain names in bad faith.
i. Respondent’s registration of 35 domain names that are confusingly similar or identical to Complainant’s trademarks is additional, strong evidence that it registered and is using the domain names in bad faith.
ii. Respondent’s operation of websites in direct competition with Complainant indicates that Respondent has registered and is using the domain names to disrupt Complainant’s business.
iii. The fame and unique qualities of the GOOGLE and ANDROID marks make it extremely unlikely that Respondent created the domain names independently. Moreover, even constructive knowledge of famous marks like GOOGLE and ANDROID is sufficient to establish registration in bad faith.
iv. Respondent’s lack of use of the some of the domain names constitutes bad faith use of the domain names.
v. Some of the domain names resolve to a corrupted website that contains viruses.
vi. Some of the domain names resolve to websites identified by anti-virus software as “phishing URLS.”
B. Respondent
Respondent has not submitted a Response to this case.
PRELIMINARY ISSUE—MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating 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 that the WHOIS records for the domain names list the same domain name servers: NS3.WAPSYST.BIZ and NS4.WAPSYST.BIZ. Complainant alleges that the domain names also forward traffic through the same IP address: 93.170.107.176. Complainant argues that the domain names likewise share the same ISP Geolocation: Amsterdam, NL. Complainant therefore argues that the Internet connections associated with the domain names share the same physical address.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
1. Complainant is a United States company that is famous for its search engine services offered under the GOOGLE trademark and for its software platform and operating system offered under the ANDROID trademark.
2. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004), as well as other registrations around the world. Complainant is the owner of trademark registrations throughout the world, such as with the Intellectual Property Office of Singapore (“IPOS”) for the ANDROID mark (e.g., Reg. No. T0721530I Nov. 6, 2007).
3. Respondent registered the disputed domain names at various dates between November 19, 2011 and May 2, 2012.
4. Respondent uses the disputed domain names in various unauthorized ways, such as operating websites that provide unauthorized ANDROID applications in direct competition with those offered by Complainant, engaging in phishing for URLs, not resolving to an active page and attempting to download malware onto a user’s computer.
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant argues that it is renowned for its search engines offered under the GOOGLE mark, and also offers a broad variety of related technological and mobile products and services. Complainant asserts that since 2007, it has offered a software platform and operating system under the ANDROID mark. Complainant contends that it owns numerous trademark registrations with the USPTO for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004), as well as registrations for the GOOGLE mark throughout countries around the world. Complainant also argues that it is the owner of numerous registrations globally for the ANDROID mark, including those it owns with the IPOS (e.g., Reg. No. T0721530I Nov. 6, 2007). See Exhibit 8a and 11. The Panel notes that Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as Complainant can demonstrate its rights in the mark in some jurisdiction. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Thus, the Panel finds that Complainant’s registration of the GOOGLE and ANDROID marks with trademark authorities throughout the world, including the USPTO and the IPOS, proves its rights in the marks pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
The second question that arises is whether the disputed domain names are identical or confusingly similar to the ANDROID and GOOGLE trademarks. Complainant argues that the <android-com-ru.com>, <androidgoogle4.com>, <google-androidplays.com>, <androidovod.com>, <android-market-ru.com>, <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com>, <android48.net>, <android4imarket.com>, <android8market.com>, <androidermarketis.net>, <androidermarkets.net>, <android-imarket.net>, <androidmarkef.net>, <android-market-mobile.com>, <android-markurs.com>, <android-marrket.com>, <androidxmarket.net>, <android-stat.info>, <android-stat1.info>, <android111.info>, <android-222.info>, <android333.info>, <android444.info>, <android555.info>, <android-777.info>, <android-downloader.org>, <androidmass.com>, <androidreservoir.com>, and <android-googleplay.net> domain names are confusingly similar to Complainant’s ANDROID mark. Complainant asserts that a domain name can be found to be identical or confusingly similar to a mark where it merely interchanges or replaces letters in order to create confusion. The Panel notes that Respondent’s <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com> domain names contain misspellings of Complainant’s ANDROID mark. The Panel determines that Respondent’s intentional misspelling of Complainant’s ANDROID mark does not distinguish the domain names from the mark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Complainant contends that a domain name registrant may also not avoid likely confusion by simply adding a descriptive or non-descriptive term to another’s mark. Complainant argues that Respondent’s <android-com-ru.com>, <androidovod.com>, <android-market-ru.com>, <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com>, <android48.net>, <android4imarket.com>, <android8market.com>, <androidermarketis.net>, <androidermarkets.net>, <android-imarket.net>, <androidmarkef.net>, <android-market-mobile.com>, <android-markurs.com>, <android-marrket.com>, <androidxmarket.net>, <android-stat.info>, <android-stat1.info>, <android111.info>, <android-222.info>, <android333.info>, <android444.info>, <android555.info>, <android-777.info>, <android-downloader.org>, <androidmass.com>, and <androidreservoir.com> domain names contain descriptive and non-descriptive terms, letters, and numbers such as “downloader,” “reservoir,” “stat,” “mass,” “111,” and others. The Panel holds that Respondent’s addition of generic or descriptive terms, letters, or numbers does not negate confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). The Panel notes that Respondent adds hyphens to its <android-com-ru.com>, <android-com-ru.com>, <android-market-ru.com>, <android-imarket.net>, <android-market-mobile.com>, <android-markurs.com>, <android-marrket.com>, <android-stat.info>, <android-stat1.info>, <android-222.info>, <android-777.info>, <android-downloader.org>, and <android-googleplay.net> domain names. The Panel finds that Respondent’s addition of hyphens to its domain names does not differentiate Respondent’s domain names from Complainant’s ANDROID mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel notes that Respondent adds generic top-level domains (“gTLD”) to the disputed domain names. The Panel determines that Respondent’s addition of gTLDs to its domain names is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that Respondent’s <android-com-ru.com>, <androidgoogle4.com>, <google-androidplays.com>, <androidovod.com>, <android-market-ru.com>, <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com>, <android48.net>, <android4imarket.com>, <android8market.com>, <androidermarketis.net>, <androidermarkets.net>, <android-imarket.net>, <androidmarkef.net>, <android-market-mobile.com>, <android-markurs.com>, <android-marrket.com>, <androidxmarket.net>, <android-stat.info>, <android-stat1.info>, <android111.info>, <android-222.info>, <android333.info>, <android444.info>, <android555.info>, <android-777.info>, <android-downloader.org>, <androidmass.com>, <androidreservoir.com>, and <android-googleplay.net> domain names are confusingly similar to Complainant’s ANDROID mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <google-plays.biz>, <google-plays.net>, and <gplay-games.net> domain names are confusingly similar to Complainant’s GOOGLE mark. Complainant contends that a domain name registrant may also not avoid likely confusion by simply adding a descriptive or non-descriptive term to another’s mark. Complainant argues that Respondent’s <google-plays.biz>, <google-plays.net>, and <gplay-games.net>domain names contain descriptive and non-descriptive terms and numbers such as “plays” and “games.” The Panel holds that Respondent’s addition of generic or descriptive terms or numbers does not negate confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel notes that Respondent adds hyphens to its <google-plays.biz>, <google-plays.net>, and <gplay-games.net> domain names. The Panel finds that Respondent’s addition of hyphens to its domain names does not differentiate Respondent’s domain names from Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel notes that Respondent adds Top Level Domains “.biz” or “.net” to the disputed domain names. The Panel determines that Respondent’s addition of gTLDs to its domain names is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s <google-plays.biz>, <google-plays.net>, and <gplay-games.net> domain names are confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).
The Panel notes that Respondent’s <androidgoogle4.com>, <google-androidplays.com>, and <android-googleplay.net> domain names include both Complainant’s ANDROID and GOOGLE marks. The Panel notes that the <google-androidplays.com> and <android-googleplay.net> domain names include the generic term “play” or “plays.” The Panel finds that Respondent’s addition of a generic term does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). The Panel notes that Respondent’s <androidgoogle4.com> domain name adds the numeral “4” to Complainant’s marks. The Panel holds that the addition of numerals to a domain name does not distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). The Panel notes that Respondent’s <google-androidplays.com> and <android-googleplay.net> domain names include a hyphen. The Panel determines that Respondent’s addition of a hyphen does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The Panel notes that Respondent’s <androidgoogle4.com>, <google-androidplays.com>, and <android-googleplay.net> domain names add the gTLDs “.com” or “.net.” The Panel finds that the addition of gTLDs to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <androidgoogle4.com>, <google-androidplays.com>, and <android-googleplay.net> domain names are confusingly similar to Complainant’s ANDROID and GOOGLE marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish
It is now well-established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ANDROID and GOOGLE trademarks, variously make spelling alterations to them and add descriptive and non-descriptive terms, letters, and numbers expressions as described above, thus giving the false impression that the domain names are official domain names of Complainant and that they will lead to official websites of Complainant;
(b) Respondent has then used the domain names variously to resolve to websites that provide unauthorized ANDROID applications in direct competition with those offered by Complainant, have been identified by anti-virus software as “phishing URLs”, do not resolve to an active page or resolve to a website that attempts to download malware onto a user’s computer;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant claims that Respondent is not commonly known as the domain names or any name containing Complainant’s GOOGLE or ANDROID marks. Complainant asserts that Respondent’s WHOIS information in connection with the domain names makes no mention of the domain names or the marks as Respondent’s name. The Panel notes that the WHOIS information identifies “Aleksandr V Malkov / Private Person” as the registrant of the <android-com-ru.com>, <androidgoogle4.com>, and <google-androidplays.com> domain names. See Exhibit 4. The Panel notes that the WHOIS information identifies “Anastasiya Bubina” as the registrant of the <androidvod.com> domain names. See Exhibit 4. The Panel notes that the WHOIS information identifies “Fundacion Private Whois / Domain Administrator” as the registrant of the <adnoidmarket.com>, <andiodmarket.com>, <androibmarket.com>, <android48.net>, <android4imarket.com>, <android8market.com>, <androidermarketis.net>, <androidermarkets.net>, <android-imarket.net>, <androidmarkef.net>, <android-market-mobile.com>, <android-markurs.com>, <android-marrket.com>, <androidxmarket.net>, <google-plays.biz>, <google-plays.net>, <gplay-games.net> domain names. See Exhibit 4. The Panel notes that the WHOIS information identifies “Kolya Bokov” as the registrant of the <android-stat.info>, <android-stat1.info> domain names. See Exhibit 4. The Panel notes that the WHOIS information identifies “mihail efremov” as the registrant of the <android111.info>, <android-222.info>, <android333.info>, <android444.info>, <android555.info>, <android-777.info> domain names. See Exhibit 4. The Panel notes that the WHOIS information identifies “Vadim V Sakhnik” as the registrant of the <android-downloader.org> domain name. See Exhibit 4. The Panel notes that the WHOIS information identifies “Privat Person / Ivan Palkin” as the registrant of the <android-market-ru.com>, <androidmass.com>, <androidreservoir.com> domain names. See Exhibit 4. The Panel notes that the WHOIS information identifies “Warik3 Warik3” as the registrant of the <android-googleplay.net> domain name. See Exhibit 4. Complainant contends that it has not authorized or licensed Respondent to use any of its trademarks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) Complainant argues that Respondent is operating websites that provide unauthorized ANDROID applications in direct competition with those offered by Complainant. The Panel notes that Respondent‘s <androidmarkef.net> domain name resolves to a website for the “Android Market,” featuring unauthorized ANDROID applications including “Street View on Google Maps.” See Exhibit 15. The Panel notes that Respondent’s <androidovod.com>, <android-stat.info>, <android-stat1.info>, and <google-plays.biz> domain names link to the “Android Market” featuring ANDROID game applications. See Exhibit 15. Accordingly, the Panel holds that Respondent’s use of the <androidmarkef.net>, <androidovod.com>, <android-stat.info>, <android-stat1.info>, and <google-plays.biz> domain names to provide links to unauthorized ANDROID applications is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors);
(f) Complainant argues that Respondent’s <androibmarket.com>, <android4imarket.com>, <androidermarketis.net>, <android-market-mobile.com>, <android-market-ru.com>, <android-marrket.com>, and <gplay-games.net> domain names have been identified by anti-virus software as “phishing URLs.” See Exhibit 15. The Panel finds that Respondent’s use of the <androibmarket.com>, <android4imarket.com>, <androidermarketis.net>, <android-market-mobile.com>, <android-market-ru.com>, <android-marrket.com>, and <gplay-games.net> domain names to phish for users’ personal information is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”);
(g) Complainant contends that some of Respondent’s domain names do not resolve to an active page. Complainant alleges that Respondent’s <android-downloader.org>, <androidreservoir.com>, <android48.net>, and <androidmarkets.net> domain names resolve to a website stating “503 Service Temporarily Unavailable.” See Exhibit 15. The Panel determines that Respondent’s failure to make an active use of its <android-downloader.org>, <androidreservoir.com>, <android48.net>, and <androidmarkets.net> domain names shows that Respondent has no rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
(h) Complainant claims that some of the domain names resolve to a website that, according to anti-virus software, attempts to download malware onto a user’s computer. Complainant asserts that Respondent’s <adnoidmarket.com>, <andiodmarket.com>, <android111.info>, <android-222.info>, <android333.info>, <android444.info>, <android555.info>, <android-777.info>, <android8market.com>, <android-com-ru.com>, <androidgoogle4.com>, <android-googleplay.net>, <android-markurs.com>, <androidmass.com>, <androidxmarket.net>, <google-androidplays.com>, <google-plays.net>, and <android-imarket.net> domain names contain malicious software. See Exhibit 15. The Panel holds that Respondent’s use of the <adnoidmarket.com>, <andiodmarket.com>, <android111.info>, <android-222.info>, <android333.info>, <android444.info>, <android555.info>, <android-777.info>, <android8market.com>, <android-com-ru.com>, <androidgoogle4.com>, <android-googleplay.net>, <android-markurs.com>, <androidmass.com>, <androidxmarket.net>, <google-androidplays.com>, <google-plays.net>, and <android-imarket.net> domain names to download malicious software under users’ computers evidences a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii));
(i) Complainant asserts that a number of domain names are also examples of typosquatting. The Panel notes that Respondent’s <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com> domain names contain Complainant’s ANDROID mark while deleting or substituting letters as well as adding the term “market.” The Panel holds that Respondent’s typosquatting shows Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). However, the Panel notes that panels have consistently held that typosquatting exists where the changes to a mark are so minute that they would garner Internet traffic from Internet users who accidentally misspelled the mark while typing it. For instance, the alteration of a mark by a single letter. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel notes that Respondent adds full terms to the <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com> domain names beyond the misspelling of the ANDROID mark and which do not therefore come within the regular meaning of typosquatting for the purposes of the <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com> domain names although they are inappropriate for other reasons.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent’s registration of 35 domain names that are confusingly similar to Complainant’s trademark is additional, strong evidence that it registered and is using the domain names in bad faith. The Panel finds that Respondent’s registration of 35 domain names in the instant case demonstrates an attempt at preventing Complainant from registering its marks in domain names under Policy ¶ 4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names.).
Secondly, Complainant alleges that Respondent’s operation of websites in direct competition with Complainant indicates that Respondent has registered and is using the domain names to disrupt Complainant’s business. The Panel notes that Respondent <androidmarkef.net> resolves to a website for the “Android Market,” featuring unauthorized ANDROID applications including “Street View on Google Maps.” See Exhibit 15. The Panel notes that Respondent’s <androidovod.com>, <android-stat.info>, <android-stat1.info>, and <google-plays.biz> domain names link to the “Android Market” featuring ANDROID game applications. See Exhibit 15. The Panel therefore determines that Respondent’s competing use of the <androidmarkef.net>, <androidovod.com>, <android-stat.info>, <android-stat1.info>, and <google-plays.biz> domain names disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Thirdly, Complainant alleges that Respondent’s lack of use of the some of the domain names constitutes bad faith use of the domain names. Complainant alleges that Respondent’s <android-downloader.org>, <androidreservoir.com>, <android48.net>, and <androidmarkets.net> domain names resolve to a website stating “503 Service Temporarily Unavailable.” See Exhibit 15. In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel found that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith. Thus, the Panel finds that Respondent’s failure to make an active use of the domain names constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that some of the domain names resolve to a corrupted website that contains viruses. Complainant asserts that Respondent’s <adnoidmarket.com>, <andiodmarket.com>, <android111.info>, <android-222.info>, <android333.info>, <android444.info>, <android555.info>, <android-777.info>, <android8market.com>, <android-com-ru.com>, <androidgoogle4.com>, <android-googleplay.net>, <android-markurs.com>, <androidmass.com>, <androidxmarket.net>, <google-androidplays.com>, <google-plays.net>, and <android-imarket.net> domain names contain malicious software. See Exhibit 15. The Panel holds that Respondent’s use of the disputed domain names to download malicious software onto Internet users’ computers proves Respondent registered the domain names in bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Fifthly, Complainant claims that some of the domain names resolve to websites identified by anti-virus software as “phishing URLS.” Complainant argues that Respondent’s <androibmarket.com>, <android4imarket.com>, <androidermarketis.net>, <android-market-mobile.com>, <android-market-ru.com>, <android-marrket.com>, and <gplay-games.net> domain names have been identified by anti-virus software as “phishing URLs.” See Exhibit 15. In Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006), the panel found 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. As the Panel finds that Respondent’s <androibmarket.com>, <android4imarket.com>, <androidermarketis.net>, <android-market-mobile.com>, <android-market-ru.com>, <android-marrket.com>, and <gplay-games.net> domain names are being used to phish for consumers’ personal information, the Panel finds that Respondent has registered and is using the domain names in bad faith under Policy ¶ 4(a)(iii).
Sixthly, Complainant contends that the fame and unique qualities of the GOOGLE and ANDROID marks make it extremely unlikely that Respondent created the domain names independently. Moreover, Complainant asserts that even constructive knowledge of famous marks like GOOGLE and ANDROID is sufficient to establish registration in bad faith. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame and unique qualities of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Seventhly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the ANDROID and GOOGLE trademarks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <android-com-ru.com>, <androidgoogle4.com>, <google-androidplays.com>, <androidovod.com>, <android-market-ru.com>, <adnoidmarket.com>, <andiodmarket.com>, <andiodmarket.net>, <androibmarket.com>, <android48.net>, <android4imarket.com>, <android8market.com>, <androidermarketis.net>, <androidermarkets.net>, <android-imarket.net>, <androidmarkef.net>, <android-market-mobile.com>, <android-markurs.com>, <android-marrket.com>, <androidxmarket.net>, <google-plays.biz>, <google-plays.net>, <gplay-games.net>, <android-stat.info>, <android-stat1.info>, <android111.info>, <android-222.info>, <android333.info>, <android444.info>, <android555.info>, <android-777.info>, <android-downloader.org>, <androidmass.com>, <androidreservoir.com>, and <android-googleplay.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated : June 5, 2013
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