Google Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1211001473756
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <android-rus-market.net>, registered with Internet.bs Corp.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on December 3, 2012.
On December 2, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <android-rus-market.net> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. 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 December 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@android-rus-market.net. Also on December 4, 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 January 2, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Panama’s Industrial Property Office (“PIPO”) (Reg. No. 185,700 registered Nov. 13, 2009);
ii. United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,530,935 registered Apr. 23, 2010); and
iii. Chinese State Administration for Industry and Commerce (“SAIC”) (Reg. No. 6,363,165 registered Mar. 28, 2010).
i. Complainant has not authorized or licensed Respondent to use any of its trademarks in any way. Respondent, based upon the WHOIS information, is not commonly known by the disputed domain name.
ii. Respondent’s disputed domain name resolves to a website which purports to offer game applications for download, thereby competing with Complainant’s own services. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
iii. Further, the disputed domain name downloads malware onto a user’s computer or device, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
i. Respondent had both actual and constructive knowledge of Complainant’s rights in and use of the ANDROID mark based on the fame and unique qualities of the mark and Respondent’s use of Complainant’s marks on the resolving website.
ii. Respondent’s current use of the disputed domain name to provide game applications for download in competition with Complainant constitutes bad faith registration and use, as such use is disruptive to Complainant’s business.
iii. Respondent’s disputed domain name resolves to a corrupted website that places malware on Internet users’ computers and devices. Such use is clearly evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google, Inc. who list its contact information as Mountain View, CA, USA. Complainant was established in 1997 and has offered a broad array of technological products and services since that time under its GOOGLE mark. Since 2007 it has offered additional products and services under the mark ANDROID. Google owns registrations for the ANDROID mark in the USA and throughout the world including the countries of Ukraine, Moldova, Kazakhstan, and Kyrgyzstan.
Respondent is Fundacion Private Whois who list its contact information as Zona 15 Panama. The Respondent registered the disputed domain name on October 9, 2012.
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.”).
Complainant asserts that it owns rights in the ANDROID mark, which it uses in connection with its mobile platform for phones, tablets, and other devices. Complainant claims that it has numerous filings with trademark authorities around the world for the ANDROID mark and owns numerous registrations of the mark, including the following:
PIPO Reg. No. 185700 registered Nov. 13, 2009;
UKIPO Reg. No. 2530935 registered Apr. 23, 2010; and
SAIC Reg. No. 6363165 registered Mar. 28, 2010.
See Complainant’s Exhibit 8. The Panel finds that Complainant has submitted sufficient evidence establishing its rights in the ANDROID mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Further, Complainant argues that Respondent’s <android-rus-market.net> domain name is confusingly similar to the ANDROID mark. Complainant contends that the use of the term “market” enhances confusing similarity as it describes the online retail store previously called “Android Market,” which has since been rebranded as “Google Play.” Further, Complainant contends that the use of the abbreviation “rus” for Russia and the gTLD “.net” fail to remove the domain name from the realm of confusing similarity. The Panel notes that the disputed domain name contains two hyphens, but finds that hyphens and gTLDs are irrelevant within an analysis of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel also holds that the additions of geographic terms and descriptive terms are not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). The Panel finds that Respondent’s <android-rus-market.net> domain name is confusingly similar to the Complainant’s ANDROID mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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). The Complainant has met this burden.
Complainant asserts that it has not authorized or licensed Respondent to use any of its trademarks in any way. Complainant further argues that Respondent, is not commonly known by the disputed domain name. The Panel notes that the WHOIS information referenced by Complainant identifies “Fundacion Private Whois / Domain Administrator” as the registrant of the <android-rus-market.net> domain name. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name 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).
Further, Complainant argues that Respondent’s disputed domain name resolves to a website which purports to offer game applications for download, thereby competing with Complainant’s own services. Complainant argues that such use of the <android-rus-market.net> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel agrees. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant additionally asserts that the disputed domain name downloads malware onto a user’s computer or device, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel agrees. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent’s current use of the disputed domain name to provide game applications for download in competition with Complainant constitutes bad faith registration and use, as such use is disruptive to Complainant’s business. The Panel agrees and finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant also argues that Respondent’s disputed domain name resolves to a corrupted website that places malware on Internet users’ computers and devices, and that such use is clearly evidence of bad faith. The Panel holds that these facts provide further evidence of 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)”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <android-rus-market.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson,
Dated: January 9, 2013
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