national arbitration forum

 

DECISION

 

Google Inc. v. Michael Richter

Claim Number: FA1110001410958

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA.  Respondent is Michael Richter (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>, <opensourceandroid.com>, <phandroid.net>, <sellyourandroid.com>, and <technoandroid.com>, registered with 1&1 Internet AG.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.)as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2011; the National Arbitration Forum received payment on October 13, 2011.

 

On October 12, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>, <opensourceandroid.com>, <phandroid.net>, <sellyourandroid.com>, and <technoandroid.com> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names.  1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 October 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2011 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@androidgoggle.com, postmaster@androidintel.com, postmaster@flyingandroid.com, postmaster@googlebug.com, postmaster@googlecitysearch.com, postmaster@g00gler.com, postmaster@googlesandroid.com, postmaster@googlesthinkquarterly.com, postmaster@lifegoogle.com, postmaster@opensourceandroid.com, postmaster@phandroid.net, postmaster@sellyourandroid.com, and postmaster@technoandroid.com.  Also on October 13, 2011, 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 November 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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. 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <opensourceandroid.com>, <technoandroid.com>, <sellyourandroid.com>, and <phandroid.net> domain names are confusingly similar to Complainant’s ANDROID mark. 

 

Respondent’s <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, and <lifegoogle.com> domain names are confusingly similar to Complainant’s GOOGLE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>, <opensourceandroid.com>, <phandroid.net>, <sellyourandroid.com>, and <technoandroid.com> domain names.

 

3.    Respondent registered and used the <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>, <opensourceandroid.com>, <phandroid.net>, <sellyourandroid.com>, and <technoandroid.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Google Inc., is an Internet services and software development company based out of California, USA.  Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its GOOGLE mark (e.g., Reg. No. 2,884,502 registered September 14, 2004).  Complainant also owns trademark registrations with many national trademark authorities worldwide for the ANDROID mark, including one with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2530935 registered April 2, 2010).

 

Respondent, Michael Richter, registered the <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>, <opensourceandroid.com>, <phandroid.net>, <sellyourandroid.com>, and <technoandroid.com> domain names on or after April 4, 2011.  Respondent’s disputed domain names resolve to websites which feature third-party sponsored listings to competing and unrelated websites and businesses. 

 

DISCUSSION

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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has presented sufficient evidence to establish rights in its GOOGLE (e.g., USPTO Reg. No. 2,884,502 registered September 14, 2004) and ANDROID marks (UKIPO Reg. No. 2,530,935 registered April 2, 2010) under Policy ¶ 4(a)(i) through its trademark registrations with national trademark authorities.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).  Further, in reference to the ANDROID mark, the Panel finds that Complainant is able to establish rights in the mark under Policy ¶ 4(a)(i) even though Respondent lives in the United States and the registered marks that Complainant presents are in different countries.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant contends that Respondent’s <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <opensourceandroid.com>, <technoandroid.com>, <sellyourandroid.com>, and <phandroid.net> domain names are confusingly similar to Complainant’s ANDROID mark.  The Panel notes that the domain names contain any variety of the following in addition to Complainant’s mark: a generic term or terms; the letters “p” and “h”; and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that such additions to the mark do not relieve the domain names from being confusingly similar to the main term in each domain name, the ANDROID mark, under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Further, Complainant argues that Respondent’s <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, and <lifegoogle.com> domain names are confusingly similar to Complainant’s GOOGLE mark.  The Panel notes that each domain name contains the GOOGLE mark in addition to one or more of the following:  a generic term or terms; numerals ; the letter “s”; Complainant’s ANDROID mark; and/or the gTLD “.com.”  Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).  See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>, <opensourceandroid.com>, <phandroid.net>, <sellyourandroid.com>, and <technoandroid.com> domain names.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Complainant claims that Respondent is not commonly known by the disputed domain names.  Complainant asserts that it has not authorized or licensed Respondent to use any of its GOOGLE and ANDROID marks.  The Panel notes that the WHOIS information, which identifies the registrant of the disputed domain names as “Michael Richter,” is not similar to any of the disputed domain names.  Respondent has not contradicted any of these allegations as Respondent has not responded to this case.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to 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 disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant claims that the disputed domain names resolve to websites that contain competing and unrelated hyperlinks.  Specifically, according to Complainant’s screen shots, the <androidgoggle.com>, <androidintel.com>, <googlecitysearch.com>, <opensourceandroid.com>, <phandroid.net>, and <technoandroid.com> domain names resolve to websites hosting competing and unrelated hyperlinks, and the <flyingandroid.com>, <googlebug.com>,  <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>,  and <sellyourandroid.com>  domain names resolve to websites only hosting unrelated hyperlinks.  The Panel determines that both uses are evidence that Respondent is making neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the 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).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent registered and uses the <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>, <opensourceandroid.com>, <phandroid.net>, <sellyourandroid.com>, and <technoandroid.com> domain names as part of a pattern of bad faith registration and use.  As Respondent has registered thirteen domain names that incorporate Complainant’s marks, the Panel agrees with Complainant and finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names.  The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”).

 

According to Complainant’s screen shots, Respondent’s <androidgoggle.com>, <androidintel.com>, <googlecitysearch.com>, <opensourceandroid.com>, <phandroid.net>, and <technoandroid.com> domain names resolve to websites hosting competing and unrelated hyperlinks.  The Panel infers that Complainant’s business is disrupted when Internet users access the resolving websites and click on the hyperlinks resolving to Complainant’s competitors.  Based on this disruption of Complainant’s business, the Panel finds Respondent registered and uses the <androidgoggle.com>, <androidintel.com>, <googlecitysearch.com>, <opensourceandroid.com>, <phandroid.net>, and <technoandroid.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Complainant’s screen shots show that the <flyingandroid.com>, <googlebug.com>,  <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>,  and <sellyourandroid.com>  domain names resolve to websites only hosting unrelated hyperlinks, whereas the  <androidgoggle.com>, <androidintel.com>, <googlecitysearch.com>, <opensourceandroid.com>, <phandroid.net>, and <technoandroid.com> domain names resolve to websites hosting competing and unrelated hyperlinks.  Complainant argues that Respondent profits from click-through fees from all of the aforementioned hyperlinks.  As the Panel previously determined that all of the disputed domain names are confusingly similar to Complainant’s marks, the Panel concludes that Respondent is attempting to commercially gain from creating confusion as to Complainant’s affiliation with the disputed domain names.  Therefore, the Panel concludes that Respondent is guilty of bad faith registration and use under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

Complainant further alleges that Respondent’s registration and use of the <googlesthinkquarterly.com> domain name is evidence of opportunistic bad faith.  According to Complainant, Respondent registered the disputed domain name after Complainant announced its Think Quarterly periodical.  The Panel agrees with Complainant and concludes that Respondent’s opportunistic registration and use of the disputed domain name is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do.  The panel finds a negative inference from this.”).

 

Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the GOOGLE and ANDROID marks.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).  In this case, the Panel determines that Respondent had actual knowledge of Complainant’s ANDORID and GOOGLE marks, which is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <androidgoggle.com>, <androidintel.com>, <flyingandroid.com>, <googlebug.com>, <googlecitysearch.com>, <g00gler.com>, <googlesandroid.com>, <googlesthinkquarterly.com>, <lifegoogle.com>, <opensourceandroid.com>, <phandroid.net>, <sellyourandroid.com>, and <technoandroid.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  November 21, 2011

 

 

 

 

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