Google Inc. v. Private Whois androidmarkey.com
Claim Number: FA1202001429705
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Private Whois androidmarkey.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <androidmarkey.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 15, 2012; the National Arbitration Forum received payment on February 16, 2012.
On February 18, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <androidmarkey.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 February 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2012 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, admin-istrative, and billing contacts, and to postmaster@androidmarkey.com. Also on February 23, 2012, 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 March 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written 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
Complainant has rights in the ANDROID mark, which it uses in connection with the marketing of a software platform and operating service run on a variety of computing environments, including mobile devices.
Complainant has registrations for the ANDROID mark on file throughout the world, including: Reg. No. 2,530,935, registered April 23, 2010, through the United Kingdom Intellectual Property Office (“UKIPO”); Reg. No. 1,208,628, registered January 15, 2009, through IP Australia (“IPA”); and Reg. No. 798,638, registered November 7, 2008 through the Intellectual Property Office of New Zealand (“IPONZ”).
Respondent registered the disputed <androidmarkey.com> domain name on January 22, 2012.
The domain name is confusingly similar to Complainant’s ANDROID mark.
Respondent is not commonly known by the <androidmarkey.com> domain name.
The <androidmarkey.com> domain name resolves to a website by means of which Respondent sells counterfeit versions of the goods and services offered by Complainant.
Respondent is not commonly known by the disputed domain name.
Respondent is not licensed or otherwise authorized by Complainant to use Complainant’s ANDROID mark.
Respondent has no rights to or legitimate interests in the contested domain name.
Respondent registered and is using the disputed domain name in bad faith in order to disrupt Complainant’s business.
Respondent registered and is using the <androidmarkey.com> domain name in bad faith in order to take commercial advantage of Internet users’ mistakes as to the source, sponsorship or affiliation of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the ANDROID mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with national trademark authorities as identified in the Complaint. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a complainant had established rights in marks for pur-poses of the Policy where the marks were registered with a trademark authority). This is true without regard to whether Complainant has secured its rights by registration of its mark in a jurisdiction other than that in which Respondent resides or does business. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction.
The <androidmarkey.com> domain name is confusingly similar to Complainant’s ANDROID mark in that in forming the domain name, Respondent merely added to the mark the nonsense term “markey” (an apparent misspelling of the business term “market”) and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, are insufficient to avoid a finding of confusing similarity under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a 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)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
Similarly, Respondent’s addition of the gTLD “.com” is irrelevant for purposes of determining confusing similarity. See 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); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The Panel therefore finds that Respondent’s <androidmarkey.com> domain name is confusingly similar to Complainant’s ANDROID mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have rights to or legitimate interests in its 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 Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a Panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed <androidmarkey.com> domain name, and that Respondent is not licensed or otherwise authorized by Complainant to use Complainant’s ANDROID mark. Moreover, although the WHOIS record for the domain name lists the domain name registrant as “Private Whois androidmarkey.com,” there is nothing in the record to indicate that Respondent was commonly known by the domain name prior to the registration of the domain. On this record, we conclude that Respondent has not been com-monly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain within the meaning of Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the domain name <shantiyogaworks.com>, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(a)(ii), despite listing its name as “Shanti Yoga Works” in its WHOIS contact information, because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the disputed <androidmarkey.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), in that the domain name resolves to a website which sells counterfeit versions of Complainant’s goods and services. On the record before us, we concur. See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s use of a domain name confusingly similar to the mark of another to sell counterfeit products of that mark holder is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011):
Respondent’s sale of counterfeit versions of Complainant’s mer-chandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legit-imate noncommercial or fair use.
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is clear that Respondent intends to disrupt Complainant’s business by its regis-tration and use of the <androidmarkey.com> domain name as alleged in the Complaint, and specifically by its use of the domain name to market counterfeit versions of Complainant’s products. This stands as evidence of bad faith regis-tration and use of the domain as contemplated in Policy ¶ 4(b)(iii). See Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that a respondent’s disputed domain name was used to disrupt a complainant’s business, which was evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii), where Internet users looking for that complainant’s website would instead find respondent’s website and un-wittingly purchase its counterfeit goods); see also Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011):
The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
In addition, it is evident that Respondent registered and uses the disputed do-main, which is confusingly similar to Complainant’s ANDROID mark, in order to take commercial advantage of Internet users by confusing them as to the possibility that Complainant is the source or sponsor of the disputed domain name and its resolving website. This is evidence of bad faith registration and use of the domain within the contemplation of Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding a re-spondent to have registered and used a disputed domain name in bad faith by selling counterfeit products by capitalizing on the likelihood that Internet users would find its website while searching for a complainant’s website); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding that, where a respondent benefits from the confusion caused by the registration and use of a domain name confusingly similar to the mark of another by selling counterfeit versions of a complainant’s goods and services, this is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <androidmarkey.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 12, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page