Google Inc. v. Troll face / Arthuro Petriv
Claim Number: FA1212001476275
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Troll face / Arthuro Petriv (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-play-markets.com>, registered with CLICK REGISTRAR, INC. D/B/A PUBLICDOMAINREGISTRY.COM.
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 17, 2012; the National Arbitration Forum received payment on December 18, 2012.
On December 18, 2012, CLICK REGISTRAR, INC. D/B/A PUBLICDOMAIN-REGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <google-play-markets.com> domain name is registered with CLICK REGIS-TRAR, INC. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. CLICK REGISTRAR, INC. D/B/A PUBLICDO-MAINREGISTRY.COM has verified that Respondent is bound by the CLICK REGISTRAR, INC. D/B/A PUBLICDOMAINREGISTRY.COM registration agree-ment 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 19, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of January 8, 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@google-play-markets.com. Also on December 19, 2012, the Written Notice of the Complaint, notifying Respond-ent of the e-mail addresses served and the deadline for a Response, was trans-mitted to Respondent via post and fax, to all entities and persons listed on Re-spondent’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 18, 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 employs the GOOGLE trademark to operate an Internet search engine that has become one of the largest, most highly recognized, and widely used search services in the world.
Complainant holds registrations with trademark authorities throughout the world for its GOOGLE mark, including one on file with the Russian Federation’s Feder-al Service for Intellectual Property (“ROSPATENT”) (Reg. No. 191,819, register-ed August 2, 2000).
On March 6, 2012, Complainant introduced its “Google Play” store, an online retail store that allows Internet users to purchase music, books, magazines, movies, TV shows, apps and games from the web or any Android device.
By September 2012, over 25 billion applications had been downloaded from Complainant’s Google Play store.
Complainant has filed trademark applications for the GOOGLE PLAY mark with the United States Patent and Trademark Office (“USPTO”) (including Serial No. 85,560,994, filed March 5, 2012).
Respondent registered the <google-play-markets.com> domain name on August 24, 2012.
The disputed domain name is confusingly similar to Complainant’s GOOGLE and GOOGLE PLAY marks.
The <google-play-markets.com> domain name currently resolves to a website that purports to offer games and applications for download, but instead appears to be employed as part of a phishing scheme by which visitors to the site are tricked into surrendering their personal information.
An English translation of the text available on the website reveals several state-ments designed to convince users that the site offers legitimate access to Com-plainant’s Google Play store, when in fact it does not.
Respondent receives income from the operation of the website resolving from the disputed domain name.
Respondent also uses the disputed domain to sell a counterfeit version of Com-plainant’s “Google Play” software.
Respondent has attempted to pass itself off as Complainant by imitating Com-plainant’s GOOGLE mark and GOOGLE PLAY logo on its resolving website.
Respondent has not been commonly known by the contested domain name, and Complainant has not authorized Respondent to use its GOOGLE trademark in any way.
Respondent has neither any rights to nor any legitimate interests in the contested domain name.
Respondent registered and uses the <google-play-markets.com> 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 a UDRP 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 its GOOGLE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, ROSPATENT. See, for example, Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a UDRP complainant had established rights in the GOOGLE mark through its holding of a trademark registration with one or more national trademark authorities).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <google-play-markets.com> domain name is confusingly similar to Complainant’s GOOGLE mark. The domain name contains Complainant’s entire mark, adding two hyphens, the terms “play” and “market,” which singly and together describe an aspect of Complainant’s busi-ness, and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark do not distinguish the domain name from the mark under the standards of the Policy. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that adding hyphens and top-level domains to the mark of another in forming a domain name is irrelevant for purposes of the Policy). See also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity under Policy ¶ 4(a)(i) between a domain name and the mark of another from it was derived where a respondent’s domain name combined a complainant’s mark with a generic term that had an obvious relationship to that complainant’s business).
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 respondent 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 allega-tions of the Complaint filed in this proceeding, we are free to conclude that Re-spondent 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 Complaint, 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 examine the record before us, in light of the provisions of Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent 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 is not commonly known as the <google-play-markets.com> domain name, and that Complainant has not authorized Respondent to use the GOOGLE trademarks in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Arthuro Petriv,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the domain name within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in the domain names as described in Policy ¶ 4(c)(ii), where the WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent,
that the <google-play-markets.com> domain name resolves to a website that purports to offer games and applications for download, but appears instead to be employed as a phishing scheme whereby visitors are tricked into surrendering personal information, beginning with mimicking the appearance of Complainant’s Google Play on-line store. This use of the domain name constitutes a phishing scheme, which is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (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 use of the <google-play-markets.com> domain name to offer purported “Google Play” software, as de-scribed in the Complaint, disrupts Complainant’s business, and that this employ-ment of the domain name demonstrates that the domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iii). See, for example, Cater-pillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
We are likewise convinced from the evidence that Respondent’s employment of the <google-play-markets.com> domain name, which is confusingly similar to Complainant’s GOOGLE trademark, to profit from the operation of the website resolving from the domain name, shows bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a UDRP complainant’s website to its own website for commercial gain, where that respondent likely profited from this diversionary scheme).
For these reasons, the Panel finds that Complainant has met 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 <google-play-markets.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 31, 2013
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