Google Inc. v. Sergej Valuev
Claim Number: FA1210001469431
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Sergej Valuev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <android-apper.net> and <android-apper445.net>, registered with Regtime Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2012; the National Arbitration Forum received payment on October 30, 2012. The Complaint was received in both English and Russian.
On November 9, 2012, Regtime Ltd confirmed by e-mail to the National Arbitration Forum that the <android-apper.net> and <android-apper445.net> domain names are registered with Regtime Ltd and that Respondent is the current registrant of the names. Regtime Ltd has verified that Respondent is bound by the Regtime Ltd 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 November 19, 2012, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of December 10, 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, administrative, and billing contacts, and to postmaster@android-apper.net, postmaster@android-apper445.net. Also on November 19, 2012, the Russian language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <android-apper.net> and <android-apper445.net> domain names, the domain names at issue, are confusingly similar to Complainant’s ANDROID mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has offered a software platform and operating system under the ANDROID mark since 2007. Complainant’s ANDROID platform is one of the world’s most popular mobile platforms and powers hundreds of millions of phones, tablets, and other devices. Complainant owns numerous worldwide trademark registrations for its ANDROID mark with the Chinese State Administration for Industry and Commerce (“SAIC”) (Reg. No. 6363165 registered Mar. 28, 2010), European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 6410856 registered Oct. 21, 2010), and many others. Respondent’s <android-apper.net> and <android-apper445.net> domain names are confusingly similar to Complainant’s ANDROID mark, merely adding the non-distinctive terms “apper” or “apper445” to the mark. Respondent is not commonly known by the disputed domain names or any name containing Complainant’s ANDROID mark. Respondent’s WHOIS information makes no mention of the domain name or the ANDROID mark as Respondent’s name or nickname. Complainant has not authorized or licensed Respondent to use any of its trademarks. The disputed domain names resolve to websites that will not open for Complainant’s representatives because they have been flagged by anti-virus software as being unsafe and containing malicious software downloads. Respondent had actual and constructive knowledge of Complainant’s rights in the ANDROID mark, as the fame and unique qualities of the mark as well as Complainant’s prior registration and use of the mark makes it extremely unlikely that Respondent came up with the disputed domain names on its own. Respondent’s website is obviously connected with Complainant’s ANDROID marks and contains viruses and malicious software that Complainant’s representative’s computer would not allow to be opened. This type of use is evidence of bad faith. The <android-apper.net> and <android-apper445.net> domain names were registered on November 21, 2011 and January 19, 2012, respectively.
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.”).
Complainant has offered a software platform and operating system under the ANDROID mark since 2007. Complainant contends that its ANDROID platform is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices. Further, Complainant owns numerous worldwide trademark registrations for its ANDROID mark, including those with the SAIC (Reg. No. 6363165 registered Mar. 28, 2010), OHIM (Reg. No. 6410856 registered Oct. 21, 2010), and many others. Complainant’s numerous trademark registrations with many governmental trademark authorities around the world are sufficient for Complainant to establish rights in the mark under Policy ¶ 4(a)(i), regardless of Respondent’s location. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Further, Respondent’s <android-apper.net> and <android-apper445.net> domain names are confusingly similar to Complainant’s ANDROID mark, merely adding the non-distinctive terms “apper” or “apper445” to the mark. The disputed domain names also add hyphens and the generic top-level domain (“gTLD”) “.net.” The addition of hyphens and generic/non-distinct terms and/or numbers as well as a gTLD, does not render the disputed domain names distinct and , ,therefore, the disputed domain names are confusingly similar to Complainant’s 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
Respondent’s WHOIS information makes no mention of the domain name or the ANDROID mark as Respondent’s name or nickname, and Complainant has not authorized or licensed Respondent to use any of its trademarks. The WHOIS information on record indicates that “Sergej Valuev” is the registrant of the disputed domain names. Accordingly, the Paned finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, the disputed domain names resolve to websites that will not open for Complainant’s representatives because they have been flagged by anti-virus software as being unsafe and containing malicious software downloads. Such use of the disputed domain names does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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)”); see also Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The Panel is not bound by the enumerated bad faith factors of Policy ¶ 4(b), but may look to the totality of the circumstances when determining whether bad faith registration and use has occurred under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s <android-apper.net> and <android-apper445.net> domain names are obviously connected with Complainant’s ANDROID marks and resolving websites contain viruses and malicious software that Complainant’s representative’s computer would not allow to be opened. This type of use is evidence of bad faith on Respondent’s part. The Panel finds as such under Policy ¶ 4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Further, Respondent had actual and constructive knowledge of Complainant’s rights in the ANDROID mark, as the fame and unique qualities of the mark as well as Complainant’s prior registration and use of the mark make it extremely unlikely that Respondent came up with the disputed domain names on its own. Although many panels have not regarded constructive notice to be sufficient for a finding of bad faith, this Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore it finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <android-apper.net> and <android-apper445.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 31, 2012
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