Google Inc. v. Domain Admin / PrivacyProtect.org
Claim Number: FA1401001539646
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Domain Admin / PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <download-playmarket.net>, registered with LLC "REGISTRAR OF DOMAIN NAMES REG.RU".
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2014; the National Arbitration Forum received payment on January 17, 2014.
For almost two weeks, the Forum requested verification from the Registrar. On January 29, 2014, the Fourm notified the Registrar and ICANN that the Registrar had not complied with the multiple requests. The Forum proceeded, as per instructions from ICANN, to administer the UDRP case.
On January 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2014 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@download-playmarket.net. Also on January 31, 2014, 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 February 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <download-playmarket.net> domain name is confusingly similar to Complainant’s GOOGLE PLAY mark.
2. Respondent does not have any rights or legitimate interests in the <download-playmarket.net> domain name.
3. Respondent registered and uses the <download-playmarket.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is the well-known provider of Internet search engine and related services. Complainant has filed for a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE PLAY mark (e.g., Serial No. 85,560,994, filing date March 5, 2012). Complainant has established common law rights in the GOOGLE PLAY mark dating back to March 6, 2014.
Respondent registered the <download-playmarket.net> domain name on January 17, 2013, and uses it to operate a website featuring Complainant’s GOOGLE PLAY mark and offering a purportedly upgraded GOOGLE PLAY store download in direct competition with Complainant’s GOOGLE PLAY store.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel notes that Complainant does not have a valid trademark registration for the GOOGLE PLAY mark. However, Complainant does not need a valid trademark registration if it can establish common law rights in the mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.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).
Complainant has filed a trademark registration with the USPTO for the GOOGLE PLAY mark (e.g., Serial No. 85,560,994, filing date March 5, 2012). Complainant argues that its GOOGLE PLAY store was introduced on March 6, 2012, following the rebranding and expansion of the Android market. Complainant claims that the GOOGLE PLAY store has garnered significant media attention, and that the launch of the GOOGLE PLAY store on March 6, 2012 was covered in numerous media publications such as USA Today, CNET, TIME Magazine and Bloomberg Businessweek, along with the New York Times. Complainant alleges that as of July 2013, Complainant’s GOOGLE PLAY store offered over one million separate applications for download and as of May 2012, over 15 billion applications had been downloaded from the GOOGLE PLAY store. In Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007), the panel found, by virtue of the commercial popularity and success of the domain name complainant operated under the JUNKMYCAR mark, that complainant had established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i). Thus, the Panel finds that Complainant has common law rights in the GOOGLE PLAY mark, showing rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <download-playmarket.net> domain name is confusingly similar to Complainant’s mark, as it merely adds the descriptive terms “download” and “market” before and after the PLAY portion of Complainant’s GOOGLE PLAY mark. Complainant argues that the use of the terms “download” and “market” with the “play” portion of the GOOGLE PLAY mark describes the goods and services offered by Complainant through the GOOGLE PLAY store, which is a store offering downloads of apps and media. The Panel agrees and finds that Respondent’s inclusion of descriptive terms does not distinguish the disputed domain name from Complainant’s GOOGLE PLAY mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel notes that Respondent removes the term GOOGLE from Complainant’s GOOGLE PLAY market in the disputed domain name. However, the omission of a term in Complainant’s mark does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). The Panel finds that the term “GOOGLE” is descriptive in this case and thus its omission is not a distinguishing factor. The Panel also finds that the addition of punctuation and a gTLD does not distinguish the disputed domain name from Complainant’s GOOGLE PLAY mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel finds that Respondent’s <download-playmarket.net> domain name is confusingly similar to Complainant’s GOOGLE PLAY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <download-playmarket.net> domain name, and that it has not authorized or licensed Respondent to use any of its trademarks. The WHOIS information identifies “Domain Admin / PrivacyProtect.org” as the registrant of the disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <download-playmarket.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the <download-playmarket.net> domain name to operate a website that purports to offer an upgraded version of “Google Play Market” for download, in direct competition with Complainant’s GOOGLE PLAY store. Prior panels have held that a respondent’s use of a disputed domain name to provide competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the <download-playmarket.net> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent attempts to pass itself off as Complainant. The Panel notes that Respondent’s <download-playmarket.net> domain name resolves to a webpage purporting to contain an upgraded version of “Google Play Market” for download, in direct competition with Complainant’s GOOGLE PLAY store. Complainant alleges that the disputed domain name resolves to a Russian-language website prominently featuring a close imitation of Complainant’s own stylized GOOGLE PLAY logo in the upper left-hand corner. The Panel finds that Respondent is using the disputed domain name to attempt to pass itself off as Complainant, and thus is not using the <download-playmarket.net> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant alleges that Respondent’s <download-playmarket.net> domain name resolves to a website that, according to anti-virus software, presents a “threat” of a Trojan virus. The Panel notes that Respondent’s disputed domain name resolves to a webpage stating “ACCESS DENIED: The requested website cannot be provided” and “A threat has been detected.” Complainant contends that Respondent presumably profits when users download malware from this website. The Panel finds that Respondent’s use of the <download-playmarket.net> domain name to provide malicious software is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See 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)”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <download-playmarket.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 10, 2014
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