Google Inc. v. Zharkov Maxim / Aleksey Lebedev
Claim Number: FA1306001506108
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Zharkov Maxim / Aleksey Lebedev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <osandroid.com> and <youandroid.info>, registered with GoDaddy.com, LLC, and 1&1 Internet AG.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2013; the National Arbitration Forum received payment on June 24, 2013. The Complaint was submitted in both Russian and English.
On June 25, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <osandroid.com> domain name is registered with GoDaddy.com 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 June 27, 2013, the Forum served the Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of August 5, 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@osandroid.com. Also on June 27, 2013, the Russian language 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.
A timely Response was received and determined to be complete on August 6, 2013.
Complainant submitted a timely Additional Submission on August 13, 2013. Respondent submitted a timely Additional Submission on August 20, 2013.
On August 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Preliminary Issue: Identity of Respondent and Removal of one Domain Name
Complainant submitted an Additional Submission withdrawing its allegations that Respondent had registered two domain names; Complainant asks the Panel to consider only its arguments with respect to the <osandroid.com> domain name which is owned by Respondent Maxim Zharkov who submitted a Response admitting to having registered the <osandroid.com> domain name. Complainant has withdrawn allegations regarding the <youandroid.info> domain name, and proceeds only with regard to the <osandroid.com> domain name. Accordingly, the proceedings against Respondent Aleksey Lebedev as to the <youandroid.info> domain name shall be dismissed without prejudice.
Additionally, the Complaint and Amended Complaint name Zharkov Maxim as the Respondent as to the <osandroid.com> domain name. The WHOIS information shows Zharkov Maxim as the registrant of the <osandroid.com> domain name. However, the Response is submitted by Maxim Zharkov. The Panel shall treat Zharkov Maxim and Maxim Zharkov as one and the same and as the Respondent herein.
Complainant requests that the <osandroid.com> domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Google is a Delaware corporation located in Mountain View, California created in 1997. Google is renowned for its search engine services offered under the GOOGLE mark, and also offers a broad variety of related technological and mobile products and services.
Since 2007, Google has offered a software platform and operating system under the ANDROID mark. Android is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices. Third-party developers create applications for the Android platform that are available for users to download and purchase from Google.
Complainant has used the ANDROID trademark on its website for commercial use since as early as October 2008.
Complainant owns hundreds of applications and registrations for the ANDROID trademark throughout the world dating back to 2007, including the following:
a. Russian Federal Service for Intellectual Property (ROSPATENT) (Reg. No. 375,862 registered November 12, 2007)
b. Argentina National Institute of Industrial Property (INPI) (Reg. No. 2,257,816 registered November 12, 2008)
c. Brazil National Institute of Industrial Property (INPI) (Reg. no. 829,470,239 registered February 1, 2011)
d. United States Patent and Trademark Office (“USPTO”) (Pending No. 77/318,565)
The Android Market store, now referred to as the Google Play store, allows users to browse and download applications and digital content for use on the Android platform. As the popularity of the Android platform has grown among device manufacturers, the number of applications available for Android has increased dramatically. The Android platform has met with resounding success in the marketplace and has quickly increased its share of the mobile and personal device markets. Google has expended substantial resources promoting the ANDROID mark and its associated products and services. In addition to Google’s advertising efforts, the Android platform, Android Market and the Google Play store have been the subject of thousands of unsolicited stories in the media, highlighting Google’s innovative and successful open source software platform. As a result of Google’s widespread use of the ANDROID mark, its extensive advertising and promotion of the platform, and continuous and unsolicited media coverage, high degree of consumer recognition of the ANDROID mark, and the strong and loyal base of ANDROID customers, the ANDROID mark is famous.
Respondent registered the <osandroid.com> domain name on May 10, 2011, well after Complainant established rights in the ANDROID mark. The domain name resolves to a Russian-language website advertising itself as OS ANDROID, and offering purported Android applications and games for download. Respondent’s website displays the logo “OS ANDROID” in large lettering in the upper left-hand corner, in typeface identical to the custom typeface used by Complainant as part of its famous ANDROID logo. Respondent has attempted to pass itself off as Complainant by imitating Complainant’s logo.
Respondent’s <osandroid.com> disputed domain name is confusingly similar to Complainant’s ANDROID mark. Respondent’s disputed domain name adds the descriptive and non-descriptive terms “os,” the abbreviation for operating system before Complainant’s ANDROID mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use its ANDROID trademark. Respondent is using the disputed domain name to divert Internet users to a competing website featuring advertisements.
Moreover, the use of a domain name to divert Internet users to websites where services that compete with the complainant are advertised is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent is operating a website that provides purported Android applications for download in direct competition with those offered by Google as part of the Google Play store. By using a logo that is very similar to, and uses the same custom typeface as Complainant’s ANDROID logo, Respondent attempts to pass itself off as Complainant.
Respondent registered and is using the domain name in bad faith. The fame of the ANDROID mark make it extremely unlikely that Respondent created the domain name independently. Respondent’s use of the disputed domain name suggests opportunistic bad faith. Furthermore, Respondent’s operation of a website offering Android applications for download in competition with Complainant—and featuring a logo incorporating Complainant’s own ANDROID logo—indicates that Respondent has registered and is using the domain name in bad faith to disrupt Complainant’s business.
B. Respondent Maxim Zharkov contends:
Respondent, Maxim Zharkov, is the owner of the <osandroid.com> domain name. Respondent is a sole proprietor doing business in the Russian Federation. Respondent provides services to primarily Russian speaking users, who look for extra information about mobile applications for smartphones, tablet computers and other devices powered by Android operating system (OS Android devices), and for mobile applications (applications, apps).
The website associated with the <osandroid.com> domain name is a free-of-any charge and up-to-date directory of mobile applications for OS Android devices (further in the Response referred as “Services”, “Website”). Along with the detailed information regarding mobile applications, the Services let users either download a genuine mobile application for their OS Android devices (if this app is made intrinsically free to download) or prompt users exclusively to the Complainant’s Google Play store (if the app made as paid to download).
Respondent provides Internet users with downloads of the genuine mobile application from its business or directs users to Complainant’s website.
Each mobile device such as smartphone or tablet is powered by an operating system (OS). There are a number of mobile OS in use, e.g. iOS from Apple Inc., Android from Google Inc., Windows Phone from Microsoft Corporation, BlackBerry OS and BlackBerry 10 from Research in Motion, Bada from Samsung, Firefox OS by Mozilla and others. Each device requires applications (programs for mobile devices) to operate or to extend its functionality. Applications are created by developers, businesses or individuals, independent of OS makers. Applications are distributed by so called app stores. An App store is a website that contains a directory of mobile applications available for download to user’s device.
OS Android is built upon and itself is an open source platform. The open source code of the Android OS is distributed by Google under permissive open-source license, which allows makers of mobile devices and independent developers of mobile applications to use it. This means an unlimited number of Android app stores might exist.
Google runs its own Android application store – Google Play. The Google Play store is also embedded in OS Android, thus it is a default app store for every OS Android device. Most of the users use the services available through Google Play as well as many developers publish their applications through Google Play alone. (Google Play comes pre-installed on every OS Android device) However, there is a growing number of alternative distributors who offer extended and more convenient services for Android apps users. Developers seek for new distribution channels as well. Among these app stores/distributors are Amazon Appstore for Android, SlideME, Yandex Store, and AndroidPIT.
Respondent offers only free applications for download. Every page dedicated to each free application contains two equally visible alternatives for users: they are able to download the app from the Respondent or they can visit the Complainant’s Google Play store to download the app from the Complainant.
Respondent does not provide links or otherwise redirect its users to other app stores.
All the Services are free. The Respondent charges neither developers nor users. Respondent does not offer any applications for sale, receive any money from users, and the users are always prompted to purchase paid Android applications from Complainant’s Google Play store.
Respondent is not in direct competition with Google. Respondent is a rightful Android app distributor. Respondent offers to its users an equal opportunity to download a free app from the Complainant’s Google Play store and redirects all paying users exclusively to the Complainant.
By their very nature mobile applications are not interoperable between the wide range of existing mobile operating systems (e.g. iOS, Android, Windows Phone, BlackBerry OS, Bada, Firefox OS, Ubuntu for Mobile, Tizen and others). Thus, first criteria by which each user distinguishes the app store suitable for them, is by the OS their devices are run on. Not to confuse its users, an app store must prominently and explicitly point out, which OS their applications are compatible with, as the name of the operating system (e.g. Android OS, iOS, BlackBerry OS and such) is the principal descriptive characteristic. A mobile application cannot be readily identified without using the name of the OS it is compatible with.
For this only reason, Respondent, as a distributor of applications run on OS Android, chose, registered and uses the <osandroid.com> domain name to describe to its first-time visitors and returning users that it offers only applications or information about applications that run on the Android operation system distinctively from, e.g. iOS or Windows Phone OS. Thus, the registration and use of the <osandroid.com> domain name by Respondent in connection with mobile applications that run on Android OS is descriptive.
Respondent chose and used a logo that contained the phrase “OS Android” for the same descriptive purpose, so a user is aware of the OS with which the applications from Respondent’s app store are compatible. The logo was replaced right after Respondent received the Complaint. The overall look and design of the Website had and has nothing in common with Complainant’s Google Play store.
In registering and using the domain name and maintaining the Website, Respondent has not traded on the goodwill of Complainant, suggested any affiliation or association with Complainant, or attempted to pass itself off as Complainant.
Respondent has a legitimate interest in the domain name and has carried on legitimate business under the <osandroid.com> website for over 2 years. Before notice of the dispute, Respondent used and continues to use the domain name in connection with a bona fide offering of goods and services, namely, providing comprehensive editorial information about Android apps to users, distributing free Android applications and prompting user to the Complainant’s Google Play store for paid to download apps.
Furthermore, Respondent contends that the Oki Data rationale applicable to resellers or distributors applies here. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). The Panel in Oki Data concluded that under certain conditions the use of a vendor’s trademark as a domain name by a distributor or reseller should be regarded as a bona fide offering of goods or services.
Android mobile applications cannot be attributed to Complainant and are not trademarked goods (they do not include or involve Complainant’s Android mark); however, Respondent does not use the domain name to sell any goods or provide services that are not connected with the Android operating system or Android mobile applications. The Website is entirely dedicated to information related to Android platform and distribution of OS Android applications.
Respondent contends that his use of the domain name is fair use under Policy ¶ 4(c)(iii) without intent to misleadingly divert consumers. Respondent registered and is using the domain name and used the logo to illustrate to users that the Website is dedicated to the mobile applications that run on OS Android in contrast to Apple's iOS, Microsoft's Windows Phone OS, Research in Motion's BlackBerry OS and such. The name of the mobile operation system is the main descriptive characteristic of each app and every app store service. Thus, Respondent used the domain name in fair manner and never attempted to misleadingly divert users by using the domain name.
The registration was not for the purpose of disrupting the business of a competitor. The choice and registration of the domain name was dictated solely by descriptive purposes. The Respondent does not compete with the Complainant.
Respondent did not attempt to attract users by creating a likelihood of confusion with the Complainant's mark.
Furthermore, Respondent did not register or use the domain name in bad faith since Respondent has rights or legitimate interests in the domain name.
Respondent states that at the moment of registration of the domain name he did not know and could not have possibly known about the existence of ANDROID mark in the Russian Federation in respect to the Services Respondent planned to provide.
Trademark rights are protected only within the territory of its registration. Trademark rights are limited to the particular type of goods and services indicated in the registration certificate that accompanies each trademark.
Indeed, the ANDROID word mark had been registered in Russia in Class 9 prior to the domain name registration. However, according to the Nice Classification, Class 9 covers only certain goods, in particular, various apparatus and instruments, including computers and computer programs. Consequently, above mentioned ANDROID word mark could have been attributed exclusively to the mentioned goods, but not to setting up, maintaining and providing access to an online directory of Android mobile applications (the Respondent’s Services). These services are covered by Class 42 and Class 35 of the Nice Classification.
Respondent contends that the dispute is outside the scope of the UDRP. The Policy does not seek to resolve issues between parties legitimately claiming conflicting interests in the domain name.
C. Complainant’s Additional Submission
The <osandroid.com> domain name is confusingly similar to the ANDROID mark. Respondent registered the domain name on May 10, 2011, well after Complainant established rights in the ANDROID mark in Russia and worldwide. Complainant’s earliest Russian registration dates back to November 12, 2007. Accordingly, Complainant held rights in the ANDROID mark before Respondent’s registration of the domain name.
Respondent has no rights or legitimate interests in the domain name.
Respondent’s June 19, 2013 screenshot attached to the Complaint as Exhibit 11 shows that Respondent uses the domain name to offer applications for sale. A portion of this screenshot reveals a section entitled “скидки,” or “discounts.” The “discounts” section features applications side-by-side with original and discounted prices listed in rubles. As further evidence of Respondents’ bad faith, the “discounts” section which appeared prior to the filing of the Complaint is now conspicuously absent from the screenshot reflecting the “Current Look of the Website,” which Respondent attaches to his Response as Exhibit 7.
Respondent’s Exhibits feature pay-per-click advertisements for cpm.worldofwarplanes.com, a gaming site, and www.fxpro.ru, a currency trading site. Compare Resp. ¶ 14, with Resp. Ex. 6. Thus, even if it is the case that Respondent ultimately redirects some of its users to the Google Play store, this scenario does not establish legitimate noncommercial use of the domain name where Respondent uses the domain name, in the first instance, to pass his website off as a Google affiliate in order to divert consumers to a website featuring pay-per-click advertisements and applications for sale.
The Oki Data principles are not applicable here. Respondent admits that “Android mobile applications . . . are not trademarked goods.” Moreover, Respondent has not taken “steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner.” To the contrary, Respondent’s use of the domain name reveals a clear intent to pass off his website as affiliated with or sponsored by Google and/or the ANDROID operating system. The domain name resolves to a website prominently featuring Complainant’s ANDROID mark in typeface identical to the custom typeface used by Complainant as part of its famous ANDROID logo.
The domain name was registered and is being used in bad faith. Respondent admits that it chose the disputed domain name with full, actual knowledge of Complainant’s ANDROID trademark, and purposely displayed the mark on its resolving website.
Respondent used the ANDROID mark in the domain name in order to imply an affiliation with Complainant for the purpose of commercial gain, and to disrupt Complainant’s business. The domain name offered applications for sale prior to the filing of the Complaint. Moreover, Respondent’s own submissions make clear that Respondent uses the domain name opportunistically in connection with pay-per-click advertisements.
The fact that Respondent redirects Internet users to Complainant’s store does not establish a legitimate noncommercial use of a disputed domain name where Respondent uses the domain name to pass its website off as an affiliate of Complainant in order to divert consumers to a website featuring pay-per-click links and advertisements.
D. Respondent’s Additional Submission
Complainant presents no evidence that Respondent, in registering its domain name, targeted Complainant or Complainant’s mark or used the domain name deliberately in an attempt to create a likelihood of confusion with Complainant’s ANDROID mark.
The domain name contains the phrase “OS Android” that identifies for users the type of operation system for mobile applications, which can be located through the Services. This use is for descriptive purposes only.
Respondent’s awareness of the OS Android is not equal to the awareness of Complainant’s mark.
The addition of the term "OS" implies a lack of association with Complainant.
No reasonable Internet user reaching the Website looking for information about OS Android apps or applications to download would be confused as to Complainant’s affiliation with the Website and the Services.
Complainant has not presented any evidence that by using the domain name a likelihood of confusion with Complainant's mark was created in attempt to attract Internet users or these users were misleadingly diverted to the Website.
The Policy provides that either a bona fide offering of goods and services or fair use without intent for commercial gain to misleadingly divert consumers shall demonstrate the Respondent’s rights or legitimate interests to the domain name.
Respondent has been making a legitimate fair use of the domain name, “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. Respondent’s use is descriptive fair use and Respondent has not and does not seek to gain commercially by “misleadingly divert[ing] customers,” or by “tarnish[ing] the trademark.” Respondent is using Complainant’s mark for the sole purpose of referring to Android operating system, which is the platform, utilized by thousands of device makers, developers and app distributors.
The Respondent offers only free applications for download. The “discount” section indeed exists on the Website. It features applications the price for which has recently gone down in Google Play – the Complainant’s app store. The “discounts” section was temporarily closed since programming errors were found in the algorithm that was responsible for calculating application price changes. After the bugs were corrected the “discount” section has been brought back and can be seen on the Website’s main page.
The Website contains a humble volume of automatically generated ads with no relevance to the Complainant, its marks or competitors. The content of the ads displayed to users varies all the time and is different for different users. The algorithm is developed by a third-party, an owner of the online ads platform, and is determined predominantly by each particular user’s location and browsing history, and does not lead to competing goods or services. There were only two ads through the page. Thus, the presence of ads links on the Website is a legitimate use and does not negate rights or legitimate interests and/or demonstrates registration and use in bad faith under the Policy.
The ads and the pages they lead to are not connected with the domain name, Complainant, Complainant’s marks, services or goods, or competing goods or services.
Complainant Google is renowned for its search engine services offered under the GOOGLE mark, and also offers a broad variety of related technological and mobile products and services. Since 2007, Google has offered a software platform and operating system under the ANDROID mark. Android is a popular mobile platform and powers hundreds of millions of phones, tablets, and other devices. Third-party developers create applications for the Android platform that are available for users to download and purchase from Google. Complainant has used the ANDROID trademark on its website for commercial use since as early as October 2008. Complainant owns hundreds of applications and registrations for the ANDROID trademark throughout the world dating back to 2007, including the following:
a. Russian Federal Service for Intellectual Property (ROSPATENT) (Reg. No. 375,862 registered November 12, 2007)
b. Argentina National Institute of Industrial Property (INPI) (Reg. No. 2,257,816 registered November 12, 2008)
c. Brazil National Institute of Industrial Property (INPI) (Reg. no. 829,470,239 registered February 1, 2011)
d. United States Patent and Trademark Office (“USPTO”) (Pending No. 77/318,565)
Respondent Maxim Zharkov registered the <osandroid.com> domain name on May 10, 2011, well after Complainant established rights in the ANDROID mark. The domain name resolves to a Russian-language website advertising itself as OS ANDROID, and offering purported Android applications and games for download. Respondent’s website displays the logo “OS ANDROID” in large lettering in the upper left-hand corner, in typeface identical to the custom typeface used by Complainant as part of its famous ANDROID logo. Respondent has attempted to pass itself off as Complainant by imitating Complainant’s logo.
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.
Complainant alleges that it has rights in the ANDROID mark through its registrations in various locations internationally. Complainant provides extensive evidence of its registrations in locations such as the Russian Federation, Argentina, Brazil, and many others.
Evidence of a registration with a recognized authority is sufficient to establish rights in a given mark. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). Because Complainant owns numerous trademark registrations, including registrations in Russia, Respondent’s country of residence, the Panel finds that Complainant has successfully demonstrated rights in the ANDROID mark pursuant to Policy ¶ 4(a)(i). See Google Inc. v. SP, FA 1395068 (Nat. Arb. Forum Jul. 27, 2011)(“evidence of extensive worldwide trademark registration firm firmly proves Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i), regardless of Respondent’s actual location”).
Complainant contends that Respondent’s <osandroid.com> domain name is confusingly similar to Complainant’s ANDROID mark. Respondent merely adds the descriptive term “os,” short for “operating system” to Complainant’s ANDROID mark. Complainant claims that the variation to Complainant’s famous mark will cause confusion as to Complainant’s affiliation with Respondent’s resolving website. See Advanced Micro Devices, Inc. v. Dmitry, D2000-0530 (WIPO Aug. 10, 2000) (“The inclusion of the word ‘chip’ with the ATHLON mark in the domain name confirms the confusing similarity of the domain name to Complainant’s rights, because ‘chip’ describes the products offered by Complainant under the ATHLON mark.”); see also Head Tech. GmbH v. Texas Int’l Prop.Assocs. - NA NA, FA0803001172984 (Jun. 2, 2008 Nat’l Arb. Forum) (finding domain name <headsportswear.com> confusingly similar to complainant’s mark as “the second word in the Domain Name ‘sportswear’ is a word describing one of the many products to which Complainant affixes its Federally Registered Mark Head”); see also 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)).
Respondent adds the generic top-level domain (“gTLD”) “.com” to the <osandroid.com> domain name. Previous panels have found that adding a gTLD and a generic term to a mark are insufficient changes to differentiate a dispute domain name from a given mark under the Policy. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The Panel finds that Respondent’s disputed <osandroid.com> domain name is confusingly similar to Complainant’s ANDROID mark, pursuant to Policy ¶ 4(a)(i).
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).
Complainant argues that Respondent has no rights or legitimate interests in the <osandroid.com> domain name. Complainant alleges that it has not authorized or licensed Respondent to use any of its trademarks. “Unlicensed, unauthorized use of domains incorporating a complainant’s trademark is strong evidence that Respondent has no rights or legitimate interest in the domain name.” See Google Inc. v. Private Person / Dmitriy Rekruta, FA 1473942 (Nat. Arb. Forum Jan. 14, 2013). The WHOIS information for the <osandroid.com> domain name lists “Zharkov Maxim” as registrant. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name because Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain names. Complainant argues that Respondent is operating a website that provides applications for download under the ANDROID trademark, which is in direct competition with those offered by Complainant. Complainant alleges that Respondent is attempting to pass itself off as Complainant, arguing that Respondent uses a similar logo and custom type face as that of Complainant’s ANDROID trademark.
Respondent claims he has a legitimate interest in the domain name and has carried on legitimate business under the website and domain name for over 2 years. Respondent claims that before notice of the dispute, he used and continues to use the domain name in connection with a bona fide offering of goods and services, namely, providing comprehensive editorial information about Android apps to users, distributing free Android applications and prompting user to the Complainant’s Google Play store for paid to download apps. Respondent claims that he is using the <osandroid.com> domain name in correlation with a bona fide offering of goods or services, as a distributor. Respondent also alleges that the name of the operation system is the main descriptive characteristic for every application in every “application store,” and thus Respondent is using the domain name in a fair manner and not attempting to mislead Internet users.
The use of a domain name to divert Internet users to websites where services that compete with the complainant are advertised, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use. See also Caterpillar Inc. v. Pipetech, FA0706001000030 (Nat’l Arb. Forum Jul. 17, 2007) (finding registrant lacked rights or legitimate interests in domain names used to sell “products and services in competition with Complainant.”); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Respondent’s use of the domain name reveals an intent to pass off his website as affiliated with or sponsored by Google and/or the ANDROID operating system. Before the Complaint was filed, the domain name resolved to a website prominently featuring Complainant’s ANDROID mark in typeface identical to the custom typeface used by Complainant as part of its famous ANDROID logo. Under these circumstances, Respondent does not have rights or legitimate interests in the domain name. See, e.g., Am. Int’l Gr., Inc. v. Busby, FA0304000156251 (Nat’l Arb. Forum May 30, 2003) (finding no legitimate use where “domain name itself incorporates Complainant’s registered word mark, and the website associated with the domain name duplicated Complainant’s registered logo”); see also Google, Inc. v. Mikel M. Frieje, FA 102609 (Nat. Arb. Forum Jan. 11, 2002). (“Respondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] Mark is so well known”).
By using a logo that is very similar to, and uses the same custom typeface as, Complainant’s ANDROID logo, Respondent attempts to pass himself off as Complainant. This “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).” See also Google Inc. v. Private Person /Dmitriy Rekruta, FA1212001473942 (Nat’l Arb. Forum Jan. 14, 2013) (finding no rights or legitimate interests where respondent tried to pass itself off as Google by “imitating Complainant’s GOOGLE PLAY logo in addition to offering similar services as [Google]”).
Respondent contends that the Oki Data rationale applicable to resellers or distributors applies here to show that Respondent’s use of a Google’s ANDROID trademark in the <osandroid.com> domain name should be regarded as a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). The Panel in Oki Data concluded that under certain conditions the use of a vendor’s trademark as a domain name by a distributor or reseller should be regarded as a bona fide offering of goods or services. Those conditions do not apply here because Respondent does not use the website to sell trademarked goods nor does Respondent’s website accurately disclose Respondent's relationship with Google, the trademark owner.
Respondent contends that his use of the domain name is fair use without intent to misleadingly divert consumers under Policy ¶ 4(c)(iii). Respondent says that he registered and is using the domain name and used the logo to illustrate to users that the Website is dedicated to the mobile applications that run on OS Android in contrast to other operating systems. However, the Oki Data rationale does not apply to permit Respondent to use Google’s ANDROID trademark to provide non-trademarked goods or services. Furthermore, use of Google’s logo was misleading as to the source or affiliation.
Respondent contends that his awareness of the OS Android is not equal to the awareness of Complainant’s mark. Respondent argues that an authorization from the mark owner to use a mark in a domain name is not significant under the Policy when a domain name was registered and has been used to describe services being provided, and there is no impression that those services are services of the mark owner. However, Respondent has made more than a descriptive use of the website by incorporating a logo very similar to Complainant’s ANDROID logo and using the same custom typeface as Complainant’s logo. Respondent has attempted to pass himself off as Complainant.
Respondent contends that the addition of the term "OS" implies a lack of association with Complainant. However, Respondent’s website before the Complaint was filed displayed a similar logo and the same typeface giving the appearance of affiliation with Complainant.
Respondent has not denied the presence of “pay-per-click” ads on the Website. Respondent denies that the domain name contains “pay-per-click services” that contain links to Complainant’s competitors. Respondent contends that the Website contains a humble volume of automatically generated ads with no relevance to the Complainant, its marks or competitors; the content of the ads vary and is different for different users; and the ads do not lead to competing goods or services. While a small amount of non-competing “pay-per-click” ads, alone might not prevent the use from being considered as non-commercial fair use, when combined with Respondent’s attempt to pass himself off as Complainant, the use cannot be fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007)(finding that Respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the Complainant).
Therefore, Respondent lacks any rights or legitimate interests in the <osandroid.com> domain name.
Complainant contends that Respondent has registered and is using the <osandroid.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant argues that Respondent uses the disputed domain name to resolve to a website that disrupts Complainant’s business by offering competing products and services. Previous panels have found bad faith use and registration where a respondent registers a domain name for the purpose of disrupting the business of a competitor. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Furthermore, Respondent’s operation of a website offering purported Android applications for download in competition with Complainant—and featuring a logo incorporating Complainant’s own ANDROID logo—indicates that Respondent has registered and is using the domain name in bad faith to disrupt Complainant’s business. See, e.g., Google Inc. v. Private Person / Dmitriy Rekruta, FA1212001473942 (Nat’l Arb. Forum Jan. 14, 2013) (“The Panel finds Respondent’s use of the disputed domain name to offer competing game applications while using Complainant’s logo shows bad faith registration and use under Policy ¶4(b)(iii)”). The Panel finds that Respondent registered and is using the <osandroid.com> domain name in bad faith by disrupting Complainant’s business under Policy ¶ 4(b)(iii).
Respondent receives click-through fees from its use of the disputed domain name. Therefore, the Panel finds Respondent’s use of the disputed domain names is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Google Inc. v. Private Person / Dmitriy Rekruta, FA 1473942 (Nat. Arb. Forum Jan. 14, 2013)(Complainant claims Respondent’s current use of the disputed domain name to offer game applications for download demonstrates Respondent’s intent to attract Internet users to Respondent’s website, for which Respondent presumably profits in some manner. Respondent’s disputed domain name resolves to a webpage that provides game applications for download, similar to Complainant’s GOOGLE PLAY services. Complainant argues that Internet users may be confused into believing Respondent’s website is somehow affiliated with Complainant. The Panel finds Respondent’s use of the disputed domain name to attract Internet users for its own commercial gain demonstrates bad faith registration and use under Policy ¶4(b)(iv)).
Complainant argues that Respondent’s use of the disputed domain names indicates opportunistic bad faith. Complainant claims that Respondent’s use of the disputed domain names and the use of the ANDROID trademark signal a connection between the two that suggests opportunistic bad faith. Previous panels have found opportunistic bad faith when domain names are so obviously connected with a complainant’s mark that use by anyone other than complainant suggests opportunistic bad faith use and registration. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names). Likewise, where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). The Panel concludes that Respondent’s behavior indicates opportunistic bad faith under Policy ¶ 4(a)(iii).
Complainant contends that in light of the fame and unique quality of Complainant's ANDROID trademark, it is inconceivable that Respondent could have registered the <osandroid.com> domain name without actual knowledge of Complainant's rights in the mark. Respondent has admitted that it was aware of Complainant’s ANDROID mark at the time of registration. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, due to the obvious connection between Complainant’s marks and the <osandroid.com> domain name. The Panel concludes that actual knowledge is sufficient evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent claims that he could not have known about the ANDROID mark in the Russian Federation in respect to the services that Respondent planned to provide. Respondent claims that the ANDROID trademark could have been attributed exclusively to the mentioned goods in the registration, but not including setting up, maintaining and providing access to an online directory of Android mobile applications. However, a “[c]omplainant’s trademark rights may be limited to a narrow class of goods and services and to a particular geographic area, but . . . nonetheless [b]e sufficient to serve as a basis for a claim under the Policy.” Horizon Servs., Inc. v. Now Investments, FA0803001163702 (Nat’l Arb. Forum May 6, 2008).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to the <osandroid.com> domain name. Complainant’s Complaint as to the <youandroid.info> domain name shall be dismissed without prejudice.
Accordingly, it is Ordered that the <osandroid.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 2, 2013
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