Google Inc. v. Alex G / Domain Administrator / Fundacion Private Whois
Claim Number: FA1211001472054
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Alex G / Domain Administrator / Fundacion Private Whois (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <google-play-ru.biz> and <google-play-ru.net> registered with Internet.bs Corp.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2012; the National Arbitration Forum received payment on November 20, 2012.
On November 22, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <google-play-ru.biz> and <google-play-ru.net> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. 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 December 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@google-play-ru.biz and postmaster@google-play-ru.net. Also on December 3, 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 January 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Google is a Delaware corporation located in Mountain View, California.
2. The GOOGLE name was created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, the GOOGLE search engine has become one of the largest, most highly recognized, and widely used Internet search services in the world. Google’s primary website is located at http://google.com, and Google owns and operates hundreds of additional GOOGLE-formative domain names, including nearly every top-level country code domain consisting solely of the GOOGLE Mark.
3. The GOOGLE Mark was found to be one of the top ten Best Global Brands in each of the last three years. Additionally, Google’s website has been recognized as one of the most popular destinations on the Internet for many years, well before the registration of the Domain Name. comScore, among others, ranked Google’s websites as among the most visited group of websites as early as 2004.
4. Google has consistently been honored for its technology and its services, and has received numerous industry awards.
5. The GOOGLE Mark identifies Google’s award-winning, proprietary, and unique search services, search engine technology, and associated products and services. The GOOGLE Mark has been widely promoted among members of the general consuming public since 1997, and has exclusively identified Google. As a result, the GOOGLE Mark and name symbolize the substantial goodwill associated with Google and are of immense value. Due to widespread and substantial international use, the GOOGLE Mark and name have become famous.
6. Google owns numerous United States and other foreign registrations for the GOOGLE Mark dating back to as early as 1999. Each registration remains valid and in full force and effect.
7. Google also offers a wide range of products and services beyond search. A partial list of available products and services can be found at http://www.google.com/intl/en/options/.
8. One of the services offered by Google is the Google Play store, an online retail store that allows users to browse, purchase, and access music, books, magazines, movies, TV shows, and mobile apps from a web browser or a variety of Android devices. The Google Play store was introduced by Google on March 6, 2012, following the rebranding and expansion of Android Market. Further information regarding the Google Play store can be found at https://play.google.com/about/.
9. From its inception, the Google Play store has garnered significant media attention and coverage, and has attracted millions of users. Upon its launch in March 2012, the New York Times deemed the Google Play store a “streamlined experience [with a] continuum of continuity across [Google’s] diverse ecosystem of tablets and smartphones – which other rivals in the industry.” The Google Play store currently offers over 675,000 separate applications for download. As of May 2012, over 15 billion applications had been downloaded from the Google Play store. By September 2012, this number had grown to over 25 billion downloads.
10. On March 5, 2012 and March 7, 2012, Google filed trademark applications for the stylized GOOGLE PLAY mark with the United States Patent and Trademark Office (“USPTO”). A true and correct copy of the USPTO TSDR records for the GOOGLE PLAY Mark, bearing Serial Numbers 85,560,994 and 85,563,165, respectively.
B. Respondent and the Domain Names
11. Complainant asserts pursuant to NAF Supplemental Rule 4(e) that there is a unity of ownership and control over the Domain Names to support a finding that they are registered to the same individual, that they should be included in one proceeding, and that a decision should be rendered as to all of the Domain Names.
12. Complainant asserts that Respondent registered the Domain Names under separate registrant names in an effort to avoid detection and transfer.
13. Respondent registered the Domain Name GOOGLE-PLAY-RU.BIZ on April 28, 2012, and the Domain Name GOOGLE-PLAY-RU.NET just two days later, on April 30, 2012.
14. As set forth in Table B below, both Domain Names share (1) forward traffic through the same IP address; (2) share the same ISP Name and Name Servers; and (3) share the same ISP Geolocation, meaning that the internet connections associated with the Domain Names share the same physical location.
Domain: GOOGLE-PLAY-RU.NET
IP Address: 93.170.107.176
ISP Name: RIPE Network Coordination Centre
Name Server: ns3.superidns.net
ns4.superidns.net
Geolocation: Amsterdam, NL
Domain: GOOGLE-PLAY-RU.BIZ
IP Address: 93.170.107.176
ISP Name: RIPE Network Coordination Centre
Name Server: ns3.superidns.net
ns4.superidns.net
Geolocation: Amsterdam, NL
15. These facts indicate that Respondent is a single respondent operating under various aliases identified in the Complaint. See, e.g., Swatch AG / The Swatch Group LTD v. Derek Odum / Derek A. Odum / Jeffrey Lambert / Jeffrey M. Lambert, FA1206001450983 (Nat. Arb. Forum Aug. 15, 2012) (finding evidence sufficient to enable decision that it is more likely than not that the disputed domain names were controlled by the same entity where “both domains have the same mail server and IP address”); CafePress.com, Inc. v. Dangelo Delicious a/k/a Amelie Nikita a/k/a Martin Faith a/k/a Jameson c/o Damiana a/k/a Roger Anise a/k/a Logan Feather a/k/a Rebekah Topaz a/k/a Noe Bird a/k/a Finley Traci a/k/a Anna Renee, FA08100012313667 (Nat. Arb. Forum Dec. 30, 2008) (finding evidence sufficient to justify conclusion that aliases identify the same person or entity where “all of the[] domains list the same domain name servers”); Shutterfly.com, Inc. v. Carla Douglas a/k/a Dave Smith a/k/a Ted Spencer a/k/a Jen Hansen a/k/a Nick Jones a/k/a Carla Williams a/k/a Chris Hansen a/k/a Chris Rogers a/k/a Ted Smith a/k/a Dave White a/k/a Joe Jackson a/k/a Joe Williams a/k/a Nick White a/k/a Dave Rogers a/k/a Gideon Blair a/k/a Carla Rogers a/k/a Ted Rogers a/k/a Dave Spencer a/k/a Carla Hansen a/k/a Ted Stern a/k/a Jan Jones a/k/a Jacob Sheppard a/k/a Lisa Durham a/k/a Dave Jackson a/k/a Nick Jones a/k/a Joe Stern a/k/a Ted Williams a/k/a Yazmin Wheeler a/k/a Dave Stern a/k/a Ted Douglas a/k/a Mike Hansen a/k/a Jan White a/k/a Ted Jones a/k/a Carla Smith a/k/a Jen Rogers a/k/a Mike Smith a/k/a Mike Douglas a/k/a Joe Douglas a/k/a Taylor Nash, FA0801001141116 (Nat. Arb. Forum Mar. 25, 2008) (finding listed aliases to be the same person or entity where “the disputed domain names forward traffic through the same software mechanism and IP address”).
16. The Domain Names both resolve to websites featuring sponsored links and click-through advertisements for various products and services, including “Apps on Google Play.” These websites also contain a search engine bar, providing a purported search engine function that instead leads to additional sponsored links and click-through advertisements that correspond to the entered search term.
17. In addition, as set forth in Paragraph 2 above, the Domain Names are both registered by Internet.bs.
18. Evidence supporting a finding of common ownership includes that the Domain Names are registered through the same registrar and the Domain Names redirect to the same content. See Fitness Anywhere LLC v. Jack Chiang, et al., FA1106001395271 (Nat. Arb. Forum July 27, 2011) (“Given that the domain names all point to the same website . . . the Panel holds that all the domain names are registered by the same domain name holder.”); accord Digi-Key Corp. v. Annie Brown, et al., FA1105001390069 (Nat. Arb. Forum Jul. 6, 2011) (finding common ownership notwithstanding that domains were registered to different individuals, due in part to use of same registrar, similarities in WHOIS information, and redirection of the domains to the same content).
19. The Rules provide that a Complaint may relate to more than one domain name as long as the domain names are registered by the same domain-name holder. In situations such as this, where it is clear that the same individual or entity is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registration names. See Adobe Systems Incorporated v. Domain Oz, Case No. D2000-0057 (WIPO March 22, 2000) (domains registered to multiple names found to be held by a single entity); Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., Case No. D2003-0283 (WIPO July 3, 2003) (same).
V. Legal Grounds
This Amended Complaint is based on the following legal grounds.
A. Likelihood of Confusion—ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
20. Google has used the GOOGLE Mark continuously since well prior to April 28, 2012, the earliest registration date for either of the Domain Names. Indeed, Google owns U.S. registrations that issued well prior to that date. Each remains valid and in full force. Thus, Complainant owns rights in the GOOGLE Mark that predate the registration date of the Domain Name. See, e.g., Pirelli & C. S.p.A. v. Parisa Tabriz, FA921798 (Nat. Arb. Forum April 12, 2007); FDNY Fire Safety Education Fund, Inc. v. Roger Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (“[T]he FDNY’s successful registration of its mark on the Principal Register is evidence of its rights in the mark.”).
21. Likewise, Google has used the GOOGLE PLAY Mark in connection with the Google Play store since early March 2012, nearly two months prior to the registration of the Domain Names. Accordingly, as evidenced by Google’s past and ongoing use of the Mark, along with the extensive media coverage of the Google Play store and the vast number of applications offered and downloaded prior to April 28, 2012, Google holds common law rights in the GOOGLE PLAY Mark that predate the registration of the Domain Names. See also, e.g., Shoedazzle.com, Inc. v. Stanley Pace, FA1201001424616 (Nat. Arb. Forum Mar. 1, 2012) (finding complainant’s allegations and evidence of use in commerce dating back to 2008 sufficient to show common law rights in the SHOEDAZZLE Mark that predate registration of the domain names <shoesdazzle.com> and <shoedazle.com> in March and August of 2009); Google Inc. v. Domain Administrator m.dowdell@unholdings.com, FA1111001416796 (Nat. Arb. Forum Jan. 5, 2012) (finding common law rights in the YOUTUBE Mark that predate Complainant Google’s trademark filings with the USPTO where Google asserted prior use in commerce and “supplie[d] several news articles about its mark and website . . . which talk[] about YOUTUBE and other ‘startup’ video uploading websites”).
22. A domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark.” PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsiadventure.net, pepsitennis.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”). Here, the Domain Names incorporate the GOOGLE and GOOGLE PLAY Marks in their entirety, and are confusingly similar to these Marks.
23. While the Domain Names also contain the Russian country code abbreviation “ru,” it is well settled that “the additions of a geographic term and a gTLD [to a mark] fail to remove [a] disputed domain name from the realm of confusing similarity.” Google Inc. v. Africahostway Co. Ltd., FA1112001420456 (Nat. Arb. Forum Jun. 6, 2012) (ordering transfer of <googleghana.com> from Respondent to Google); see also Google Inc. v. tan dan a/k/a domain admin, FA1201001424622 (Nat. Arb. Forum Feb. 27, 2012) (determining “that the <googlepakistan.com> domain name is confusingly similar to Complainant’s GOOGLE mark” and ordering transfer from Respondent to Google).
24. As such, the Domain Names are nearly identical and confusingly similar to the GOOGLE and GOOGLE PLAY Marks.
B. No Rights or Legitimate Interests—ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
25. As Panels have noted in evaluating infringing GOOGLE-formative domains, any “[r]espondent would be hard pressed to show that it had rights or legitimate interests in the domain name because Complainant’s [GOOGLE] mark is so well known.” Google Inc. v. Mikel M Frieje, FA011000102609 (Nat. Arb. Forum Jan. 11, 2002). Complainant has not authorized Respondent to register or use the Domain Names.
26. Likewise, given the national prominence of the Google Play store, Respondent is undoubtedly familiar with the GOOGLE PLAY Mark.
27. On information and belief, Respondent is not commonly known as the Domain Names or any name containing Complainant’s GOOGLE or GOOGLE PLAY Marks. Respondent’s WHOIS information in connection with the Domain Names makes no mention of the Domain Names or the Mark as Respondent’s name or nickname. A registrant may be found to lack any right or legitimate interest in a domain name where there is no indication it is known by that name. See Popular Enterprises, LLC v. Sung-a Jang, FA0610000811921 (Nat. Arb. Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”).
28. Complainant has not authorized or licensed Respondent to use any of its trademarks in any way. Unlicensed, unauthorized use of domains incorporating a complainant’s trademark is strong evidence that Respondent has no rights or legitimate interest in the Domain Name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA0709001076561 (Oct. 26, 2007).
29. Moreover, the Domain Names currently resolve to webpages that have been monetized with sponsored links and click-through advertisements. Such use further establishes that Respondent has no legitimate rights or interests in the Domain Name. See American Century Proprietary Holdings, Inc. v. Travis Martin, FA0905001262486 (Nat. Arb. Forum Jun. 23, 2009) (holding no rights or legitimate interests where domain name resolves to a parked website and Respondent presumably generates click-through fees from such use); Genzyme Corp. v. Keyword Marketing, Inc., FA0706001007979 (Nat. Arb. Forum Jul. 17, 2007) (holding no rights or legitimate interests where domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites).
30. Likewise, Respondent’s use of the Domain Names in connection with search engine services “amounts to a disruption of Complainant’s business and evinces registration and use in bad faith pursuant to Policy ¶4(b)(iii).” Wal-Mart Stores, Inc. v. Domain Park Ltd., FA0709001076255 (Nat. Arb. Forum Oct. 31, 2007); accord DLJ Long Term Investment Corporation v. BargainDomainNames.com, FA0202000104580 (Nat. Arb. Forum April 9, 2002) (“Using Complainant’s mark to divert Internet users to a website with competing goods is not a bona fide offering of goods and services.”).
31. Thus, Respondent lacks any right or legitimate interest in the Domain Names.
C. Bad Faith—ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
32. The evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Names in bad faith. The fame and unique qualities of the GOOGLE Mark, which was adopted and registered by Complainant years prior to the registration of the Domain Names, make it extremely unlikely that Respondent created the Domain Names independently. See, e.g., The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA0205000112627 (Nat. Arb. Forum Jul. 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration”).
33. Respondent’s current use of the Domain Names to generate revenue using pay-per-click advertising constitutes bad faith use and registration. See, e.g., Google Inc. v. Forum LLC, FA0708001053323 (Nat. Arb. Forum Oct. 7, 2007) (finding bad faith registration and use where <googlenews.com> “resolves to a commercial search engine website” generating “click-through advertising fees”); REO Speedwagon, Inc. v. Domain Administrator, FA0702000910799 (Nat. Arb. Forum Mar. 23, 2007) (finding bad faith use and registration where domain name used to attract Internet users to generate “per click” revenue); State Farm Mut. Auto. Ins. Co. v. Haan, FA0703000948470 (Nat’l Arb. Forum May 9, 2007) (“The Panel finds that appropriating another’s mark to provide links to competitors is evidence of bad faith registration and use” where the domain name resolved to a “parked” page provided by the registrar for the domain name). Such use demonstrates Respondent’s intent to attract Internet users to Registrant’s web site for commercial gain by creating a likelihood of confusion with Complainant’s GOOGLE and GOOGLE PLAY Marks.
34. Given Respondent’s registration of Domain Names that consist almost entirely of Complainant’s GOOGLE and GOOGLE PLAY Marks, it is impossible to conceive of any potential legitimate use of the Domain Names. As such, the Domain Names are being used in bad faith. See, e.g., Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003) (“Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that Respondent was unaware of Complainant's trademark . . . Respondent has provided no evidence or suggestion of a possible legitimate use . . . . Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”).
35. 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.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used . . . its domain names for any reason other than to trade on that name and to 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. That is, in itself, evidence of bad faith.” Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006).
36. Finally, Respondent has failed to list accurate contact information – and in particular, a valid telephone number – in the WHOIS records for the Domain Names, in violation of section 3.7.7.2 of the ICANN Registrar Accreditation Agreement. Respondent’s intentional concealment of his identity further establishes that his registration and use of the Domain Names is in bad faith. See Yahoo!, Inc. v. Eitan Zviely D2000-0273 (WIPO June 14, 2000) (finding that “[Respondent’s] registration under phony names” constitutes bad faith registration and use); Salomon Smith Barney Inc. v. Salomon Internet Services, D2000-0668 (WIPO Sept. 4, 2000) (finding bad faith use and registration where Respondent had “taken steps to conceal its true identity”).
37. Based on the foregoing, Respondent has registered and is using the Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent sent an email indicating it consented to the transfer of the domain names.
PRELIMINARY ISSUE – MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends there is a unity of ownership and control over the domain names to support a finding that they are registered to the same individual, they should be included in one proceeding, and a single decision should be rendered for all of the domain names. Complainant claims Respondent registered the domain names under separate registrant names in an effort to avoid detection and transfer. Complainant asserts Respondent registered the domain name <google-play-ru.biz> on April 28, 2012, and the domain name <google-play-ru.net> two days later, on April 30, 2012.
Complainant argues both domain names share
(1) forward traffic through the same IP address;
(2) the same ISP name and name servers; and
(3) the same ISP Geolocation, meaning that the Internet connections associated with the domain names share the same physical location.
Respondent has disputed none of this.
The Panel finds Complainant has presented sufficient evidence the disputed domain names are controlled by the same entity and chooses to proceed with this matter.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used 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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 Google Inc. claims it is one of the largest, most highly recognized, and widely used Internet search services in the world. Complainant’s primary website is located at the <google.com> domain name. Complainant owns and operates hundreds of additional GOOGLE-formative domain names. Complainant argues one of its services is the GOOGLE PLAY store, an online retail store that allows users to browse, purchase, and access music, books, magazines, movies, TV shows, and mobile apps from a web browser or a variety of Android devices. Complainant owns trademark registrations with the United States Patent & trademark Office (“USPTO”) for the GOOGLE mark (e.g., Reg. No. 2,806,075, registered January 20, 2004) and has filed an application for registration for the GOOGLE PLAY mark (e.g., Ser. No. 85,560,994, filed March 5, 2012). Complainant also argues it owns trademark registrations with Panama’s DGIPR for the GOOGLE mark (e.g., Reg. No. 142,241, registered May 5, 2005) and with the Netherlands BIPC for the GOOGLE mark (e.g., Reg. No. 860,242, registered April 28, 2005). Complainant claims it owns numerous trademark registrations for the GOOGLE mark in a variety of countries throughout the world. The Panel concurs and finds Complainant’s registration of the GOOGLE mark with numerous trademark offices sufficiently establishes Complainant’s rights in the marks under Policy ¶4(a)(i). 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). In addition, the Panel finds Complainant has acquired common law rights to the GOOGLE PLAY mark since its first use on March 6, 2012.
Complainant claims Respondent’s <google-play-ru.biz> and <google-play-ru.net> domain names are nearly identical or confusingly similar to Complainant’s GOOGLE registered mark and GOOGLE PLAY common law mark because they fully incorporate said marks and contain the Russian country code abbreviation “ru.” The addition of a geographic term does not adequately distinguish Respondent’s disputed domain names from Complainant’s marks under Policy ¶4(a)(i). See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Respondent added a gTLD to each of the disputed domain names, which is disregarded for the purposes of this analysis because every domain name must contain a TLD (either a gTLD or ccTLD). The Panel finds the addition of a gTLD does not eliminate confusing similarity under Policy ¶4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Respondent also added hyphens between the words “google,” “play,” and “ru.” The addition of hyphens does not adequately differentiate Respondent’s disputed domain names from Complainant’s marks under Policy ¶4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”). Therefore, the Panel finds Respondent’s <google-play-ru.biz> and <google-play-ru.net> domain names are nearly identical or confusingly similar to Complainant’s GOOGLE and GOOGLE PLAY marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues Respondent is not commonly known by the disputed domain names or any name containing Complainant’s GOOGLE or GOOGLE PLAY marks. Respondent’s WHOIS information makes no mention of the domain names or the mark as Respondent’s name or nickname. The WHOIS information for disputed domain name identifies “Alex G / Domain Administrator / Fundacion Private Whois” as the domain name registrant. Complainant claims it has not authorized or licensed Respondent to use any of its trademarks in any way. Respondent has not provided any evidence showing it is known by the disputed domain name. The Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims Respondent’s disputed domain names resolve to webpages with sponsored links and click-through advertisements. Based upon screenshots supplied, Respondent’s disputed domain names resolve to websites featuring links to Complainant’s GOOGLE PLAY website, as well as other competing and unrelated links. The Panel finds Respondent’s use of the disputed domain to link to Complainant, to Complainant’s competitors, and to other unrelated websites 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). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)).
In addition, Respondent seems to be using a privacy service for its registration of these two domain names. Since the registered Respondent is acting as a nominee, Respondent cannot acquire any rights to the domain names in a commercial context. The undisclosed principal likewise cannot acquire any rights because its identity is undisclosed.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration and use of the disputed domain names in connection with search engine services amounts to a disruption of Complainant’s business. Respondent’s disputed domain names link to competing websites titled “Play Free Video Games,” “Free Play Games,” and various other websites. Respondent’s disputed domain names also feature links to unrelated websites such as “Get Your Website For Free,” “Submit Your Business Here,” and “Is He Cheating on You?” The Panel finds Respondent’s use of the disputed domain name to provide links to competing and unrelated links disrupts Complainant’s business and shows bad faith use and registration under Policy ¶4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶4(b)(iii)).
Complainant claims Respondent’s use of the disputed domain names to generate revenue using pay-per-click advertising constitutes bad faith use and registration. Respondent’s disputed domain names provide links to competing and unrelated websites, which Respondent presumably commercially benefits from (and Respondent does not dispute this). The Panel finds Respondent’s use of the disputed domain name to attract Internet users to its own commercial gain shows bad faith use and registration 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).
Complainant claims Respondent must have known about the GOOGLE mark before the disputed domain names were registered. The Panel concurs and finds Respondent had actual knowledge of the mark and Complainant's rights due to the fame and international prominence of Complainant's GOOGLE mark. The Panel finds Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Furthermore, this Panel has repeatedly held using a domain name privacy service in a commercial context raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
It is further noted Respondent has consented to transferring the disputed domain names to Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <google-play-ru.biz> and <google-play-ru.net> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, January 22, 2013
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