Google Inc. v. Jason LaBossiere / Exo Level, LLC
Claim Number: FA1402001542794
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Jason LaBossiere / Exo Level, LLC (“Respondent”), represented by Vito A. Canuso III of PLAGER SCHACK LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <androidtv.com> and <xbmcandroidtv.com>, registered with GoDaddy.com, LLC; Moniker Online Services LLC.
Each of 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.
Honorable James A. Carmody as Panelist.
Alan L. Limbury as Panelist.
Roberto A. Bianchi as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2014; the National Arbitration Forum received payment on February 11, 2014.
On February 10, 2014, Feb 11, 2014, GoDaddy.com, LLC; Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <androidtv.com> and <xbmcandroidtv.com> domain names are registered with GoDaddy.com, LLC and Moniker Online Services LLC respectively, and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Moniker Online Services LLC has verified that Respondent is bound by the GoDaddy.com, LLC and Moniker Online Services LLC registration agreements, respectively, 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 February 12, 2014, the Forum sent a Deficiency Letter to the Complainant, indicating two deficiencies in the Complaint. On February 13, 2014, Complainant submitted the Amended Complaint. On February 14, 2014, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2014 by which Respondent could file a Response to the Amended Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@androidtv.com, postmaster@xbmcandroidtv.com. Also on February 14, 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.
A timely Response was received and determined to be complete on March 6, 2014.
Complainant submitted an Additional Submission, which was received as timely and compliant on March 12, 2014. On March 16, 2014, Respondent submitted a Response to Additional Written Statement by Complainant, which also was received as timely and compliant.
On March 13, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable James A. Carmody and Alan L. Limbury as Panelists, and Robert A. Bianchi as Chair.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
In its Amended Complaint, Complainant contends as follows:
Complainant offers a software platform and operating system under the ANDROID Mark. The Android operating system was first developed in 2003 by Android, Inc., a Palo Alto company specializing in mobile device software. Google acquired Android, Inc. in August 2005. Android is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices.
One of Google’s products that integrates the Android platform is Google TV. Launched in October 2010, Google TV offers enhanced viewing of TV episodes, movies and YouTube Channels on demand, and allows users to browse websites and watch television at the same time. Android applications developed for Google TV are available for download on the Google Play store.
Google has used the ANDROID mark since well prior to September 24, 2012, the registration date of <xbmcandroidtv.com>. While the WHOIS record for <androidtv.com> lists a November 2006 registration date for this Domain Name, Respondent’s rights extend back only to August 2013, many years after Google established rights in the ANDROID Mark. Google owns European Union and Russian filings for the ANDROID Mark that issued well prior to Respondent’s registration of both disputed Domain Names. In light of these filings and Google’s substantial and exclusive use of the ANDROID Mark, Google owns protectable rights in the mark that predate the registration date of the Domain Names.
Each of the disputed Domain Names incorporates the famous ANDROID Mark in its entirety, and is confusingly similar to the ANDROID Mark. The disputed domain names merely add the term “TV” after the ANDROID Mark. In addition, the disputed domain name <xbmxandroidtv.com> adds on the terms “TV” and “XBMC,” the name of an open source media player that is available as an application in the Google Play store. This appears to be part of a concerted effort by Respondent to attract and divert users seeking Android applications for and information about Google TV from Complainant’s websites to Respondent’s own websites. The fame and prominence of the distinctive ANDROID mark will cause users encountering the domain names to mistakenly believe the domain names originate from, are associated with or are sponsored by Google. In particular, the use of the terms “TV” and “XBMC” confirms the confusing similarity of the disputed domain names to Complainant’s rights, because the terms plainly refer to the Android applications for TV offered by Google through the Google Play store, as well as the Google TV product itself. Thus, the disputed domain names are nearly identical and confusingly similar to the ANDROID mark.
Given the international prominence and omnipresence of the ANDROID platform, Respondent was undoubtedly familiar with the ANDROID mark when he registered the <xbmcandroidtv.com> domain name on September 24, 2012. Moreover, historical Whois records reveal that the <androidtv.com> domain name was transferred to Respondent in August 2013. It is well-established that even if a domain name was at one time registered in good faith, this good faith does not provide protection for subsequent bad faith transferees. Accordingly, given his indisputable knowledge of the ANDROID Mark in August 2013, Respondent is a bad faith transferee of the disputed domain name <androidtv.com> without rights or legitimate interests in the domain name.
Complainant 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 interests in the domain name. In addition, by operating a commercial website that prominently features Complainant’s ANDROID mark and Complainant’s Android robot, Respondent attempts to pass itself off as affiliated with or sponsored by 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).
Moreover, Respondent’s operation of a business called “ANDROID TV” and sale of an identically named product is a direct violation of the terms of use for Android developers.
Activities that violate a complainant’s terms of use are 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). Thus, Respondent lacks any right or legitimate interest in the Domain Names.
Respondent registered and is using the disputed Domain Names in bad faith. The fame and unique qualities of the ANDROID mark, which was adopted by Complainant prior to Respondent’s registration of the disputed domain names, make it extremely unlikely that Respondent created these domain names independently. Respondent’s willful intent to violate Google’s intellectual property rights is further exhibited by the inclusion of the entire ANDROID mark in the disputed 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. Respondent could not have chosen or subsequently used the disputed domain names for any reason other than to trade on that name and confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark, which is in itself, evidence of bad faith. See Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006).
Bad faith use and registration is further established by Respondent’s use of Complainant’s ANDROID mark and Android robot on the website associated with the disputed domain names and the products marketed on this website. Respondent’s operation of a commercial website purporting to sell a device utilizing the Android platform, but branded in violation of Google’s terms of use for developers likewise indicates that Respondent has registered and is using the domain name in bad faith. Indeed, one prior panel found bad faith registration and use where a respondent used a domain name confusingly similar to one of Google’s trademarks “to offer services . . . in violation of [Complainant’s] terms of service.” See Google Inc. v David Miller, FA 1067791 (Nat. Arb. Forum Oct. 24, 2007).
The fact that Respondent profits from its use of a domain name confusingly similar to Google’s ANDROID mark also evinces Respondent’s bad faith registration and use.
B. Respondent
In its Response, Respondent contends the following:
On November 2, 2006, Mr. Escovar registered the domain name <androidtv.com> with GoDaddy.com. The domain name was registered for purposes of displaying the type of Hollywood-centric videographic content that Mr. Escovar produced, but with a “bot” feel (or theme) to it. To some it may seem odd to connect robots and TV as a viable business strategy, but Mr. Escovar was not the only one to build on that connection. As early as 2002 a business connection already existed between TV and androids by others.
Shortly after registering the <androidtv.com> disputed domain name, Mr. Escovar began advertising his business in connection with the new domain name as a commercial website that his customers could visit. For example, he began advertising in January of 2007 in Jack Magazine. On August 1, 2013, Mr. Escovar formed a partnership with Messrs. Beaman and LaBossiere to execute a more robust business plan through the use of the <androidtv.com> domain name.
Messrs. Beaman and LaBossiere brought expertise to the table that Mr. Escovar lacked. The three gentlemen had been engaged in business talks since at least 2012. Pursuant to the terms of the agreement, each of the three gentlemen owned one-third of the partnership that now owned the <androidtv.com> domain name as part of the partnership named Exo Level. Jason LaBossiere was the IT administrator for the partnership, and was responsible for updating the registrant information with GoDaddy.com to reflect the update in ownership from full ownership by Mr. Escovar to one-third ownership by Mr. Escovar and Messrs. Beaman and LaBossiere. With the influx of new capital and expertise, Mr. Escovar and his partners were able to enhance and broaden the content of the “www.androidtv.com” website, including continuing to promote Hollywood-centric videographic services, celebrity news, and the promotion of a set top box employing the android platform, which Google permits the public to do.
As of November 2006, the month that Mr. Escovar registered his <androidtv.com> domain name, Google did not use the term “android” in any commercial sense. Google did not seek federal trademark protection for ANDROID until October, 31, 2007, almost a year later. Even then it was filed as an intent-to-use application under Section 1(b). Between November of 2006 and October of 2007, Google did not use the word “android” in any commercial or trademark form; and Google has not submitted any evidence showing otherwise. Thus, as between Mr. Escovar and Google, Mr. Escovar came first.
On November 5, 2007, a few days after filing its federal trademark registration application, and a year after Mr. Escovar registered the domain name <androidtv.com>, the Open Handset Alliance unveiled for the first time the Android operating platform. The Open Handset Alliance is an industry consortium that includes Google and many other large members of the software and computer industry. Since then, numerous companies have developed products that employ the Android operating platform and have developed applications that can be used on the android operating platform. Google not only permits this, it encourages it, as reflected in Google’s published developer guidelines. Google also permits and encourages use of its green-robot logo. See http://developer.android.com/legal.html and http://developer.android.com/distribute/googleplay/promote/brand.html.
For purposes of addressing likelihood of confusion on the merits in this action, Respondent will presume arguendo that Google established trademark rights in the mark ANDROID as of October 2008. Google contends essentially that the similarity of the <androidtv.com> domain name to Google’s ANDROID trademark is sufficient to prove likelihood of confusion. Given the ubiquity of android-based domain names in use today, a simple comparison between Google’s ANDROID mark and Respondent’s <androidtv.com> domain name is not enough. The breadth of Google’s ANDROID mark must be considered in view of all of the other marks, registrations, and domain names in use that are the same or similar to Google’s. In that regard, there are numerous domain names that use the word android in the name. Unless all of those companies are infringers, which is not the case given that Google permits companies to promote products using the android operating platform, more must be shown than merely concluding that <androidtv.com> is likely to be confused with ANDROID by a comparison in the abstract.
Notwithstanding more than six years of concurrent existence, Google has not presented a single shred of evidence of actual confusion, or of how strong a consumer’s association would be between the word “android” and the designation “tv.” It is merely presumed by Google in its Amended Complaint. The word “tv” added to the domain name <androidtv.com> does not reflect a product marketed under Google’s ANDROID mark. TV is only marketed by Google under the name GOOGLE TV.
Mr. Escovar registered the domain name <androidtv.com> before Google ever adopted the word “android” for commercial use, and long before Google ever contacted Mr. Escovar or his company Exo Level. Google only first contacted Exo Level about <androidtv.com> in late November of 2013. That initial contact was four months after Messrs. Beaman and LaBossiere joined Mr. Escovar as corporate partners, and seven years since Mr. Escovar first registered the domain name <androidtv.com>.
As discussed above, even as early as 2002, others maintained such a business connection (i.e., Hollywood and robots). Indeed, J. J. Abrams, one of Hollywood’s best-known producers, owns a production company called Bad Robot that has operated since 2001.
Mr. Escovar and Exo Level, like the owner of <android.com> in 2002 and Mr. Abrams since 2001, see commercial value in linking Hollywood and robots. Thus, Google has not shown that Respondent does not have a legitimate business interest in the <androidtv.com> domain name.
Respondent has not engaged in activities or actions that reflect bad faith. Rather, since 2006, Respondent, through Mr. Escovar, has operated and maintained a legitimate Hollywood-centric videographic services business, in which that business is promoted through, among other sites, its <androidtv.com> site. The “www.androidtv.com” website has never been used to direct viewers to a non-existent business or to draw consumers away from Google; and Google has not presented any evidence that shows as much. Respondent has also never sought to park the domain name for purposes of renting it or selling it to Google. Nor has Respondent ever attempted to disrupt the business of Google in any way.
In alleging bad faith, Google relies upon two flawed premises. The first is that Respondent’s first date of domain name use is 2013, rather than 2006. For reasons discussed above, Google is incorrect. The second is that Respondent’s selling of a set top box that employs an android operating system and Respondent’s use of the green-robot logo shows bad faith. That is also wrong because Google encourages the public to do both. Google also alleges that Respondent must have proceeded in bad faith because they adopted a domain name with the word “android” in it. That ignores the fact that numerous businesses have adopted the word “android” as part of their domain name and several promote or showcase products that employ an android operating system and use the green-robot logo.
In that regard, this not a typical ICANN dispute. This case is significantly different because the Complainant encourages countless businesses to use its technology and use its trademark. That is typical of open-source technology. Thus, asking the Administrative Panel to presume bad faith based upon Respondent’s doing what Google expressly permits others to do, would be inappropriate. Although Respondent does not concede that it violated Google’s developer policy, as Google alleges, Google may pursue redress of that alleged violation in a proper forum, but not in the present UDRP domain name dispute. Respondent recognizes that, given its size, Google faces issues with cybersquatters and others that create confusion in bad faith. But it is improper to lump them altogether and presume bad faith without considering all of the facts associated with each case individually.
The disputed domain name <xbmcandroidtv.com> was registered on September 24, 2012 by Mr. LaBossiere on behalf of Exo Level Inc. Immediately after registering the domain name, Respondent put it to use.
Google fails to supply any evidence that the public recognizes any connection at all between Google and XBMC. Indeed, it is likely that the public does not because XBMC was originally developed in 2002 for the X-Box device, not for a Google device. More importantly, it was Respondent who first merged open-source XMBC technology together with open-source android technology. To the extent that Google is presently attempting to associate itself with XBMC, such association post-dates Respondent’s use.
Respondent has always had, and continues to have, a legitimate business interest in the <xbmcandroidtv.com> domain name. From day one, the website has been used to promote products that Respondent is lawfully entitled to make and promote. The domain name has not been used for any improper purposes. From the beginning and continuing today, the <xbmcandroidtv.com> domain name has been used today to promote XBMC-based technology developed by Respondent.
Respondent did not register the <xbmcandroidtv.com> domain name in bad faith. Rather, Respondent was under the belief that, given the ubiquity of domain names using the word “android”, it was entirely appropriate to do so as long as no affirmative effort was made to steer traffic away from Google or to use the domain name to compete with Google. Because Respondent understood that Google expressly permits others to develop products and applications using its android platform, Respondent also believed that using an android-based domain name was an entirely appropriate way to market android-based products and applications.
To show bad faith, Google must show more than the simple fact that developers, who are expressly permitted to use android-based technology, and to expressly identify the technology as being “android”-based, registered a domain name that uses the word android in it in order to prove bad faith.
If Google believes Respondent has violated Google’s intellectual property rights in the exact manner in which Respondent sold permissible android-based technology, an ICANN dispute is not the proper vehicle to address it.
C. Additional Submissions
In its Additional Written Statement, Complainant contends as follows:
While Respondent asserts that the <androidtv.com> domain name was first registered in November 2006, Respondent provides no evidence that he was the initial registrant, or that he had any association with the original registrant. Instead, Respondent submits the declaration of Fernando Escovar, an admitted domain name speculator who Respondent asserts is part owner of Respondent Exo Level, LLC. While Mr. Escovar claims to be the original registrant of the <androidtv.com> domain name, historical Whois records reveal that he was first associated with this domain name in November 2007, after Google announced the launch of its Android operating system.
While Respondent submits that Mr. Escovar used the <androidtv.com> domain name in connection with a website with a “robotic theme,” historical screenshots of the domain name reveal that this is not the case. Indeed, in the years leading up to the transfer of the <androidtv.com> domain name to Respondent in August 2013, Mr. Escovar used this domain name only to redirect visitors to a website on which Mr. Escovar advertised his photography business. During this period (and prior to his purported association with Respondent), Mr. Escovar advertised himself as a “Quiet New Domain Player,” with an extensive catalog of valuable domain names. In May 2008, Mr. Escovar announced his intent to “auction [] off what may be the world`s largest domain name portfolio valued at $1.5 million.” On information and belief, in February of 2012, Mr. Escovar also attempted to sell the <androidtv.com> domain name, or trade it for a “high end car” through an advertisement on Craigslist. Mr. Escovar`s attempt to sell or trade the disputed domain name <androidtv.com> for “valuable consideration in excess of any out-of-pocket costs directly related to the domain name” demonstrates Mr. Escovar’ s bad faith use of the <androidtv.com> domain name even prior to his purported association with Respondent.
Respondent asserts that he independently registered <xbmcndroidtv.com> domain name on September 24, 2012 for the purpose of promoting and selling “products that incorporated both open-source XBMC and open-source android [sic] platform technologies,” and in particular a TV set top box that runs on Complainant`s Android operating system. In a direct violation of Google`s ANDROID brand policy, Respondent refers to this device as “ANDROID TV” or “ANDROID TV Power Pro.”
Respondent now claims that he entered into an agreement with Mr. Escovar in August 2013 to use the <androidtv.com> domain name for the same bad faith purpose: to divert users seeking information about or access to Complainant`s own Android operating system or related devices to a website that sells Respondent`s “ANDROID TV” product.
Respondent does not deny that Mr. Escovar transferred the <androidtv.com> domain name to Respondent in August 2013. Following this transfer, Respondent registered this domain name in his own name, shielded his ownership through a privacy protection service and entirely redesigned the “www.androidtv.” website to advertise and sell Respondent`s unauthorized “ANDROID TV” device.
Despite Respondent`s arguments to the contrary, the disputed domain names are confusingly similar to Complainant`s ANDROID Mark. Respondent fundamentally misstates the test under Policy ¶ 4(a)(i). The proper question is whether the disputed domain names are “identical or confusingly similar” to Complainant`s ANDROID mark, not whether there is a likelihood of confusion given “all of the other marks, registrations, and domain names in use that are the same or similar.” The existence of other third party domain names has no bearing on this analysis.
Contrary to Respondent`s assertions, Complainant need not demonstrate any connection between itself and XBMC in order to demonstrate likelihood of confusion under Policy ¶ 4(a)(i).
Mr. Escovar`s purported activities in 2007 and 2008 do not establish Respondent`s rights or legitimate interests in the domain names, as Respondent admittedly had no affiliation with Mr. Escovar during this period. At the time the Complaint was filed, Respondent was using the disputed domain names to sell “ANDROID TV” “set top boxes” that utilize Complainant`s Android operating system. As is evident from a comparison of the screenshot of the “www.androidtv.com” website attached to the Amended Complaint and the screenshot included in Figure 3 of the Response, Respondent significantly altered its website after the Complaint was filed in order to argue that the website promotes “Hollywood-centric videographic services [and] celebrity news.”
The Android guidelines provide that “Android" cannot be used in names of applications or accessory products, including phones, tablets, TVs, speakers, headphones, watches, and other devices. For example, it is incorrect to label “Android MediaPlayer". Instead, it is correct to label "MediaPlayer for Android".
Both disputed domain names feature the ANDROID Mark in its entirety and the corresponding websites advertise a product improperly referred to as “ANDROID TV.” Put simply, Respondent has used Complainant`s ANDROID mark in the disputed domain names to divert users to its own websites in order to sell a device named in contravention of Complainant`s Android Guidelines. The use of the disputed domain names to generate revenue in this manner is neither an offering of bona fide goods or services nor a legitimate noncommercial or fair use, and supports transfer under the Policy.
Respondent argues that there has been no bad faith registration of the <androidtv.com> domain name Mr. Escovar purportedly registered this domain name in November 2006. Even if this were the case, “bad faith should be assessed at the time of a transfer of a disputed domain name,” regardless of whether the original registration was in bad faith. The fact that Respondent now claims that he and Mr. Escovar are affiliated does not establish good faith registration. It is well settled that even a transfer between related parties must be deemed a new registration for purposes of the bad faith analysis. It was only after the registration by Mr. LaBossiere in August 2013 that the content of Domain Name <androidtv.com> was altered by Respondent to sell devices improperly branded as “ANDROID TV” set top boxes.
Under these circumstances, Respondent has not demonstrated good faith registration or use of <androidtv.com>. A transfer between purportedly related parties must be considered a new bad faith registration where the new owner “effectively abandoned his own prior use and actively sought to associate the Domain Name with the [c]omplainant`s business [without authorization].” See ehotel AG v. Network Technologies Polska Jasinkski Lutoborski Sp.J., D2009-0785 (WIPO Aug. 5, 2009)
In its Response to Additional Written Statement by Complainant, Respondent contends as follows:
Regardless, whether or not Mr. Escovar is properly labelled a domain speculator, it is not relevant to this case because neither Mr. Escovar, nor Respondent Exo Level, has ever attempted to sell the <androidtv.com> domain name.
A receipt for the original November 2006 registration by Mr. Escovar is attached as Exhibit G. Id. Thus, for purposes of this ICANN dispute regarding the <androidtv.com> domain name, Mr. Escovar came first. Google’s public association with the Android operating system did not exist until a year after Mr. Escovar registered the domain name. This is critical because Google’s written submissions in this ICANN action rely so heavily upon the mistaken assumption that Google came first, rather than the other way around. As a general rule, the Panel is inclined not to treat transfers of domain name registrations between commonly controlled enterprises as new registrations. There are many reasons why business enterprises may choose to transfer assets, including domain name registrations, among commonly controlled entities for legitimate reasons, as in a common reorganization of corporate structure Intelligen at p. 7 of 8; see also Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc., WIPO Case No. D2009-1244 (November 24, 2009) (where common ownership exists between early and later registrant, continuity of domain name ownership is preserved).
Besides citing to Intelligen, which supports Respondent’s position, Google cites two other cases to support the conclusion that the transfer in August of 2013 between Mr. Escovar and his partnership starts the clock anew. The first, Audio Visual Serv. Corp. v. SIA Netex Galaxy, No. FA 0713767 (Nat. Arb. Forum Jun. 27, 2006), deals with cyberflying, where the Complainant faced a constantly changing Respondent. Importantly, Audio Visual Serv. Corp. does not, as Google improperly suggests, create a well settled rule of law that a transfer between related parties must be deemed a new registration for purposes of the bad faith analysis.
The other case - Justin.tv, Inc. v. Amador Holdings Corp / Alex Arrocha, FA 1436777 (Nat. Arb. Forum May 17, 2012) – is based upon different facts. In Justin.tv v. Amador, the Respondent had transferred ownership of the domain name in dispute from holding company to holding company without submitting evidence that he had ownership rights in the holding companies. While Respondent recognizes that Administrative Panels have in the past found a transfer involving common ownership to be a material change, those cases almost invariably dealt with bad faith transfers; i.e., where the nature of the transfer showed bad faith on the part of the transferor.
Google contends that joining forces with others to sell set top boxes that employed the open-source android operating platform is evidence of bad faith. Google ignores, however, that Mr. Escovar understood, as did Messrs. LaBossiere and Beaman, that they were acting appropriately because of the permissions granted publicly by Google to use its open source android operating system, to make reference to the system using the word “android,” and to use the green robot logo. Mistakenly or not, the three of them believed they were doing what was permitted.
Complainant is a Delaware corporation created in 1997 and located in Mountain View, California. Google is renowned for its search engine services offered under the GOOGLE mark. Google also offers a variety of related technological and mobile products and services.
The Android operating system was first developed in 2003 by Android, Inc., a Palo Alto, California-based company specializing in mobile device software. Google acquired Android, Inc. in August 2005.
Google offers a software platform and operating system under the ANDROID mark. Complainant owns registrations for the ANDROID mark in numerous jurisdictions worldwide.
On November 2, 2006, Mr. Fernando Escovar registered the disputed domain name <androidtv.com>. According to GoDaddy.com`s receipt number 51617300 of the same date submitted by Respondent Mr. Escovar paid for the registration. The payment information on the receipt also states the name “Prive TV”.
On August 27, 2012, EXOLEVEL INC was incorporated by Mr. Jason LaBossiere. On September 24, 2012 Respondent registered the <xbmcandroidtv.com> disputed domain name.
On August 1, 2013 Messrs. Escovar, LaBossiere and Sean Beaman entered into a partnership agreement to be conducted under the name of Exo Level for the following purpose: “Androidtv.com; AndroidTV(tm); Red carpet & exclusive celebrity interviews, tv channel, streaming tv and movies, televisions and tv set top boxes”.
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 states that the websites corresponding to the disputed domain names advertise a product referred to as “Android TV.” Complainant contends that by such advertising, Respondent has used Complainant`s ANDROID mark in the disputed domain names to divert users to its own websites in order to sell a device named in contravention of Complainant`s ANDROID Guidelines. Complainant explains that the Android Guidelines provide that the term “Android" cannot be used in names of applications or accessory products, including phones, tablets, TVs, speakers, headphones, watches, and other devices. Thus, adds Complainant, it would be incorrect to label one of the devices “Android MediaPlayer" instead of "MediaPlayer for Android".
Respondent submits that if Complainant believes Respondent has violated Google’s intellectual property rights in the exact manner in which Respondent sold permissible android-based technology, a UDRP proceeding is not the proper vehicle to address it.
The Panel is of the opinion that the present UDRP proceeding is not the proper forum to discuss compliance of developers with the guidelines for Android establishing when branding a device should be deemed correct or incorrect. These issues belong to a legal dispute which is outside the scope of paragraph 4(a) of the UDRP, and should more properly be decided before a court of the competent jurisdiction according to paragraph 15(e) of the Rules. In this regard, the Panel notes that both Complainant and Respondent are located in California, USA and are presumably amenable to the state and federal courts of California.
Clearly differing from any wide-scope action brought before a court of competent jurisdiction, proceedings under the Policy are a simplified and expedited means to obtain an administrative decision after – typically - just one round of writings and without hearings, which makes them apt to determine whether a clear case of cybersquatting exists or not. Paragraph 135 of the Final Report of the WIPO Internet Domain Name Process of April 30, 1999, states: “(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.” See the majority opinion in Courtney Love v. Brooke Barnett, (Nat. Arb. Forum May 14, 2007): (“Thus, according to the majority, a dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy.”) The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd. Case No. DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning: (“The Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes . . . . The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”); see also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
Since the present dispute is beyond the scope of the ICANN UDRP, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <androidtv.com> and <xbmcandroidtv.com> domain names REMAIN WITH Respondent.
James A. Carmody, Panelist
Alan L. Limbury, Panelist
Roberto A. Bianchi, Chair
Dated: March 25, 2014
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