national arbitration forum

 

DECISION

 

Google Inc. v. Private Person / Genadiy Bistriy

Claim Number: FA1211001472081

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA.  Respondent is Private Person / Genadiy Bistriy (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue are <google-play-market.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on November 19, 2012; the National Arbitration Forum received payment on November 20, 2012.

 

On November 19, 2012, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <google-play-market.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAIN-REGISTRY.COM and that Respondent is the current registrant of the name.  PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respond-ent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM regis-tration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Reso-lution Policy (the “Policy”).

 

On November 26, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of December 17, 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, adminis-trative, and billing contacts, and to postmaster@google-play-market.com.  Also on November 26, 2012, the Written Notice of the Complaint, notifying Respond-ent of the e-mail addresses served and the deadline for a Response, was trans-mitted to Respondent via post and fax, to all entities and persons listed on Re-spondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent which was compliant with the requirements of the Policy and its associated rules, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 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 Not-ices, 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant operates in the Internet industry, providing a search service that can be accessed from most computer technology.

 

Complainant owns the GOOGLE trademark, which it created in 1997 and regis-tered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,806,075, registered January 20, 2004).

 

Complainant’s GOOGLE mark has widespread recognition and goodwill and is one of the most popular destinations on the Internet.

 

Complainant operates a service known as the Google Play store, launched in March 2012, which allows users to browse, purchase, and access music, books, magazines, movies, television shows, applications and games.

Respondent registered the <google-play-market.com> domain name on May 1, 2012, less than two months after Complainant launched its Google Play store.

 

The <google-play-market.com> domain name resolves to a website that displays the heading “Google-Play-Market” and offers game application downloads which competes with Complainant’s services found at its Google Play online store.

 

The <google-play-market.com> domain name is confusingly similar to Complain-ant’s GOOGLE mark.

 

Respondent has not been commonly known by the disputed domain name, and Complainant has not authorized Respondent’s use of Complainant’s GOOGLE trademark in its domain name.

 

Respondent’s use of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Respondent has neither any rights to nor any legitimate interests in the contested domain name.

 

Respondent’s use of the <google-play-market.com> domain name is disruptive to Complainant’s business and confuses Internet users.

 

Respondent both registered the disputed domain name and uses it in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding which was compliant with the requirements of the Policy and its associated rules.

 

FINDINGS

(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.

 

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."

 

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 can-celled 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 representa-tions 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 Verti-cal 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 reason-able 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.”

 

Identical and/or Confusingly Similar

 

Complainant has rights to the GOOGLE mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).

 

This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Russia).  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). 

 

Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from our review of the record that the <google-play-market.com> domain name is confusingly similar to Complainant’s GOOGLE trademark.  The domain name contains the entire mark, adding only two hyphens, plus the descriptive terms “market” and “play,” which together describe an aspect of Complainant’s bus-iness, and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not escape a finding of confusing similarity under the standards of the Policy.  See, for example, Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respond-ent’s <amextravel.com> domain name confusingly similar to a UDRP complain-ant’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 Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insub-stantial change.  Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen");  further 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.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent 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 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 that respondent to show that it does have such rights or interests); 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 ex-amine 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 Respond-ent 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 has not been commonly known by the contested <google-play-market.com> domain name and that Complainant had not authorized Respond-ent to use the GOOGLE mark in a domain name.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Private Person / Genadiy Bistriy,” which does not resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the <google-play-market.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a UDRP respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in that domain name pursuant to Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).

 

We next observe that Complainant asserts, without objection from Respondent,  that Respondent uses the <google-play-market.com> domain name to host a website offering downloadable applications which compete with Complainant’s services found at its Google Play online store.  This use of the 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).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):

 

Respondent’s appropriation of [Complainant’s] … mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.

 

The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

We are persuaded from the evidence that Respondent’s registration and use of the <google-play-market.com> domain name, as alleged in the Complaint, is disruptive to complainant’s business.  This stands as evidence that Respondent registered and uses the domain name in bad faith as provided in Policy ¶ 4(b)(iii).

See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000), where a panel concluded that a respondent registered and used a domain name derived from the mark of another within the meaning of Policy ¶ 4(b)(iii) by employing it to display a UDRP complainant’s mark on the resolving website and there offering for sale services identical to those offered by that complainant.  

 

We are also convinced from the evidence that Respondent’s registration and use of a domain name which is confusingly similar to Complainant’s GOOGLE trade-mark tends to confuse Internet users as to the possibility that the domain name is somehow affiliated with Complainant, and that Respondent does this for its com-mercial gain.  This is evidence that Respondent has registered and uses the domain name in bad faith as described in Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered and used a domain name which was confusingly similar to a UDRP complainant’s mark to host a website selling services similar to those offered by that complainant under its mark). 

 

Finally, we take note of the fact that Respondent engaged in opportunistic bad faith registration and use of the <google-play-market.com> domain name by reg-istering it only two months after Complainant launched a new service under the name GOOGLE PLAY.  See, for example, Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a UDRP respondent’s registration of the domain name <seveballesterostrophy.com> at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registra-tion [in bad faith]”).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii). 

 

DECISION

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 <google-play-market.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  January 10, 2013

 

 

 

 

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