Google Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1212001473954
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 <goolge-plaiys.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on December 3, 2012; the National Arbitration Forum received payment on December 4, 2012.
On December 10, 2012, INTERNET.BS CORP. confirmed by e-mail to the Nat-ional Arbitration Forum that the <goolge-plaiys.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 14, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of January 3, 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, adminis-trative, and billing contacts, and to postmaster@goolge-plaiys.net. Also on Dec-ember 14, 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 10, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant has rights in the GOOGLE trademark, on file with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,884,502, registered Sep-tember 14, 2004), and has filed an application for registration of the GOOGLE PLAY trademark with the USPTO (Serial No. 85,560,994, filed March 5, 2012).
Complainant uses the GOOGLE mark in the marketing of internet search ser-vices, and it uses the GOOGLE PLAY mark in offering an online retail store for books, movies, television shows and mobile applications.
Complainant has used the GOOGLE PLAY mark in connection with its online retailing continuously since March 2012.
Complainant offers over 675,000 separate applications for download under the GOOGLE PLAY mark, and to date there have been over 25 billion downloads of GOOGLE PLAY products.
Complainant holds common law rights in the GOOGLE PLAY mark that super-sede any claim that Respondent might assert to the disputed domain name.
Respondent registered the disputed <goolge-plaiys.net> domain name on August 6, 2012, by which time Complainant’s GOOGLE PLAY mark had already been established as a mark used for Complainant’s online retail website.
Respondent’s domain name is confusingly similar to Complainant’s GOOGLE PLAY mark.
Respondent has not been commonly known by the disputed domain name or any other name containing Complainant’s GOOGLE PLAY mark.
Complainant has not authorized Respondent to employ its trademarks or to reg-ister or use the contested domain name.
Respondent cannot be providing a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name be-cause the domain name resolves to a website that is stopped by Complainant’s anti-virus software for the reason that that site attempted to download malware onto Internet users’ computers.
The domain name’s resolving website purports to offer mobile applications sold in competition with Complainant’s business under the GOOGLE PLAY mark.
Respondent lacks rights to and legitimate interests in the <goolge-plaiys.net> domain name.
Respondent disrupts Complainant’s business by using the domain name to solicit the sale of products in competition with the business of Complainant.
Respondent knew of Complainant’s rights in the GOOGLE PLAY mark when it registered the contested domain name.
Respondent registered and uses the contested domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able 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 GOOGLE trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its GOOGLE mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Panama). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demon-strate rights in a mark in some jurisdiction).
Complainant has common law rights in the GOOGLE PLAY mark on the strength of the breadth and depth of its marketing efforts in support of the mark through a course of continuous use in commerce from a date preceding the registration of the contested domain name. See Artistic Pursuit LLC v. calcuttawebdevelop-ers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). See also Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding that a UDRP complainant had acquired secondary meaning in its mark sufficient to establish common law rights in it under Policy ¶ 4(a)(i) where that complainant had in-vested “enormous resources” in promoting the goods and services available under the mark).
Turning then to the central question arising under Policy ¶4(a)(i), we conclude from a review of the record that Respondent’s <goolge-plaiys.net> domain name is confusingly similar to Complainant’s GOOGLE PLAY and GOOGLE marks. The domain name contains the entire GOOGLE and GOOGLE PLAY marks, merely transposing the second “g” and the “l” in the GOOGLE mark and inserting an “i” in the middle of, and an “s” at the end of, “PLAY” in the GOOGLE PLAY mark, then adding the generic top-level domain “.com” and substituting the spac-ing between GOOGLE and PLAY with a hyphen. These alterations of the mark, made in creating the domain name, do not escape a finding of confusing similar-ity under the standards of the Policy. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctu-ation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see alsoTrip 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).
Similarly, neither the transposition of letters in a mark nor the intentional mis-spelling of a mark creates a meaningful distinction between the resulting domain name and the mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding the <googel.com> domain name to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing simi-larity, as the result reflects a very probable typographical error”); see also Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006):
The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the … domain name from the … mark under Policy ¶ 4(a)(i).
The same is true with regard to Respondent’s alterations to “PLAY” to create the “-plaiys” portion of the domain name. See, for example, 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 a 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.”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <goolge-plaiys.net> domain name, and that Complainant has not authorized Respondent to employ its trademarks or to register or use the contested domain name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Fundacion Private Whois / Domain Administrator,” which does not resemble the domain name. On this record, we conclude that Respondent has not been com-monly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legit-imate interests in it within the contemplation of Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS record, suggesting that that respondent was commonly known by the disputed domain name).
Complainant also contends, without objection from Respondent, that Respondent cannot be making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name because the <goolge-plaiys.net> domain name resolves to a website that attempts to download malware onto Internet users’ computers. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommer-cial or fair use Policy ¶ 4(c)(iii). 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 attempted to download com-puter viruses “failed to create any semblance of a bona fide offer-ing of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
The same may be said for Respondent’s alleged employment of the domain name, which again it does not deny, to solicit the sale of mobile applications in competition with the business of Complainant. See lcon, 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).”).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s employment of the disputed domain name, as alleged in the Complaint, disrupts Complainant’s business under the GOOGLE and GOOGLE PLAY marks by using the domain name to solicit the sale competing products. This is evidence that the domain name was registered and is being used in bad faith as described in Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iii) where a respondent’s websites passed users through to the website of that respondent’s competing business).
In addition, Respondent’s use of the contested domain name to spread malicious malware to the devices of Internet users who visit the domain name is also evi-dence of its registration and use in bad faith under Policy ¶ 4(b)(iv). See, for example, Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrated a respondent’s bad faith under Policy ¶ 4(b)(iv).
Policy ¶ 4(b)(iv) also requires us to conclude that, because Respondent is using a domain name which is confusingly similar to Complainant’s marks to sell goods and services in competition with the business of Complainant, this is further evidence that Respondent registered and uses the domain name. See Math-Forum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a UDRP complainant’s mark and used the domain name to host a commercial website that offered services similar to those offered by that complainant under its mark).
For these reasons, the Panel finds that Complainant has mit its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <goolge-plaiys.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 22, 2013
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