Google Inc. v. Private Person / Dmitriy Rekruta
Claim Number: FA1212001473942
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Private Person / Dmitriy Rekruta (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <g00gle-play.com>, registered with PDR Ltd. d/b/a publicdomainregistry.com.
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 December 3, 2012; the National Arbitration Forum received payment on December 4, 2012.
On December 4, 2012, PDR Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <g00gle-play.com> domain name is registered with PDR Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a publicdomainregistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a publicdomainregistry.com 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 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@g00gle-play.com. Also on December 5, 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 7, 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 name be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following factual grounds.
A. Google and the GOOGLE and GOOGLE PLAY Marks
9. Google is a Delaware corporation located in Mountain View, California.
10. 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.
11. 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.
12. Google has consistently been honored for its technology and its services, and has received numerous industry awards.
13. 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.
14. 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.
15. 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/.
16. 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/.
17. 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.
18. 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”).
B. Respondent and the Domain Name
19. According to the WHOIS database, Respondent is an individual located in Russia.
20. Respondent registered the Domain Name on October 6, 2012.
21. The website to which the Domain Name resolves features the heading “Google Play” alongside the multi-colored, triangular graphic that is part of stylized GOOGLE PLAY Mark. The website features a number of game applications, such as “Gold Miner 2” and “Hungry Shark,” and advertises “ЛУЧШИЕ ИГРЫ,” or “BEST GAMES.”
22. On information and belief, Respondent receives financial compensation in connection with user downloads of the software made available on the website, which Respondent falsely advertises to be “Google Play.”
V. LEGAL GROUNDS
This Complaint is based on the following legal grounds.
A. Likelihood of Confusion—ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
24. Google has used the GOOGLE Mark continuously since well prior to October 6, 2012, the date of registration of the Domain Name. 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.”).
25. Likewise, Google has used the GOOGLE PLAY Mark in connection with the Google Play store since March 2012, eight months prior to the registration of the Domain Name. 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 October 6, 2012, Google holds common law rights in the GOOGLE PLAY Mark that predate the registration of the Domain Name. 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”).
26. A domain name is confusingly similar to a complainant’s mark where it merely substitutes the letter “o” in the Complainant’s mark with a zero. See, e.g., Xcentric Ventures, L.L.C. v. Mark Johnson, FA0806001203824 (Nat. Arb. Forum Aug. 4, 2008) (“Respondent’s <rip0ffrep0rt.com> domain name incorporates Complainant’s RIP-OFF REPORT mark with the deletion of the hyphen, two substitutions of the number “0” for the letter “o,” and the addition of the generic top-level domain “.com.” The Panel finds these alterations do not sufficiently distinguish Respondent’s disputed domain name from Complainant’s RIP-OFF REPORT mark.”). Indeed, “[t]he substitution of the digit zero for the letter ‘o’ appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address.” Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000).
27. Likewise, the substitution of a hyphen for a space is an irrelevant factor in determining whether a domain name is confusingly similar to a mark. See Northwest Airlines, Inc. v. Capeka Hoffmann, FA0807001217872 (Nat. Arb. Forum Oct. 1, 2008) (finding domain name <northwest-air-lines.com> to be confusingly similar to Complainant’s NORTHWEST AIRLINES mark).
28. Here, the Domain Name merely substitutes two zeros in place of the two “o’s” appearing in the GOOGLE and GOOGLE PLAY Marks, and inserts a hyphen between “g00gle” and “play.”
29. As such, the Domain Name is 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).
30. 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 Name.
31. Likewise, given the national prominence of the Google Play store, Respondent is undoubtedly familiar with the GOOGLE PLAY Mark.
32. On information and belief, Respondent is not commonly known as the Domain Name or any name containing Complainant’s GOOGLE or GOOGLE PLAY Marks. Respondent’s WHOIS information in connection with the Domain Name makes no mention of the Domain Name 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”).
33. 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).
34. In this case, Respondent has attempted “to pass itself off as Complainant by imitating Complainant’s [GOOGLE PLAY] logo . . ., which is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).” Hewlett- Packard Development Company, L.P. and Hewlett-Packard Company v. Wu Wenbing, FA0911001294944 (Nat. Arb. Forum Dec. 31, 2009).
35. Moreover, the Domain Name resolves to a website that purports to offer game applications for download, thereby competing with Complainant’s own services provided as part of the Google Play store. This type of use is not considered to be in relation to 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, e.g., Google Inc. v. saldana azanero elias / saldana azanero elias, FA1205001445489 (Nat. Arb. Forum Jul. 3, 2012) (“The Panel notes that the screenshot provided by Complainant indicates that the website offers videos to download and the opportunity to upload your own videos, similar to the services offered by Complainant under the YOUTUBE mark. The Panel finds that Respondent is using the disputed domain name to offer competing services from its website and is not making a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name Policy ¶4(c)(iii).”); Google Inc. v. SP, FA1106001395068 (Nat. Arb. Forum Jul. 27, 2011) (“The Panel finds that offering competing services under Complainant’s mark is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶4(c)(iii).”).
36. Thus, Respondent lacks any right or legitimate interest in the Domain Name.
C. Bad Faith—ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
37. The evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Name 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 Name, make it extremely unlikely that Respondent created the Domain Name 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”).
38. 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).
39. Moreover, “registration and use of a domain name that differs from Complainant’s mark by only [two characters] indicates ‘typosquatting’, which is evidence of bad faith registration and use.” Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003). Noted above, here Respondent merely replaced the two “o’s” in Complainant’s GOOGLE and GOOGLE PLAY Marks with zeros, thereby capitalizing on consumer confusion and constituting bad faith registration and use. See also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
40. Indeed, in this case, “Respondent is using the [D]omain [N]ame at issue to resolve to a website at which Complainant's trademarks and logos are prominently displayed. . . . with full knowledge of Complainant’s business and trademarks.” Am. Online, Inc. v. Adrian Paul Miles d/b/a AD2000D.com, FA0203000105890 (Nat. Arb. Forum May 31, 2002). Such conduct is prohibited under the Policy and is evidence of bad faith. See id.; see also Liz Claiborne, Inc. and L.C. Licensing, Inc. and Juicy Couture, Inc. v. Sam Barakat, FA0712001116749 (Nat. Arb. Forum Jan. 29, 2008).
41. Finally, respondent’s current use of the Domain Name to offer game applications for download constitutes bad faith use and registration, as such use is disruptive to Complainant’s business and demonstrates Respondent’s intent to attract Internet users to Respondent’s web site for the purpose of “confusing Internet users into believing that Respondent’s website is somehow affiliated with Complainant and then capitalizing on that confusion.” Google Inc. v. saldana azanero elias / saldana azanero elias, FA1205001445489 (Nat. Arb. Forum Jul. 3, 2012); see also Microsoft Corporation v. N/A / Bellamy Charles, FA1206001448349 (Nat. Arb. Forum Jul. 23, 2012) (finding registration and use in bad faith where respondent used the domain name in question “to offer the download of competing computer safety software, thereby disrupting complainant’s business).
42. Based on the foregoing, Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 <google.com>. Complainant’s “Google Play” store is 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. 2,884,502, registered September 14, 2004). Complainant also owns and trademark registrations with the ROSPATENT for the GOOGLE mark (e.g., Reg. No. 191,819, registered August 2, 2000). Complainant owns trademark registrations with trademark offices in numerous countries throughout the world. The Panel concurs and finds Complainant adequately establishes its rights in the GOOGLE mark under Policy ¶4(a)(i) through its trademark registrations with the USPTO, ROSPATENT, and with other trademark offices throughout the world. 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).
Complainant argues Respondent’s <g00gle-play.com> domain name is confusingly similar to Complainant’s GOOGLE mark because it substitutes the two instances of the letter “o” of the mark with zeros (which are often not clearly distinguished on many computer displays). The Panel concurs and finds the substitution of the letter “o” for a zero does not eliminate confusing similarity between Respondent’s disputed domain name and Complainant’s mark under Policy ¶4(a)(i). See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”). Respondent also inserts a hyphen between “g00gle” and the generic term “play” in the disputed domain name. The Panel finds the addition of a hyphen to Complainant’s mark in Respondent’s disputed domain name is confusingly similar 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).”). The Panel further finds the addition of the term “play” in the domain name actually increases the confusing similarity of the disputed domain name, because Complainant’s “Google Play” store is used by Complainant to provide its services. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Respondent adds the generic top-level domain (“gTLD”) “.com” to the end of the disputed domain name. The addition of a gTLD does not adequately differentiate Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i) because every domain name requires a TLD (either a gTLD or a ccTLD). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds Respondent’s <g00gle-play.com> domain name is confusingly similar to Complainant’s GOOGLE mark 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 claims Respondent is not commonly known as the disputed domain name or any name containing Complainant’s GOOGLE or GOOGLE PLAY marks. The WHOIS information identifies “Private Person / Dmitriy Rekruta” as the registrant of the disputed domain name. Complainant claims it has not authorized or licensed Respondent to use any of its trademarks in any way. Respondent does not submit any evidence showing it is commonly known by the disputed domain name (or that Respondent has been authorized to use the mark). Accordingly, 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 domain name resolves to a website offering game applications for download, competing with Complainant’s services. Offering game applications that compete with Complainant’s services 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 Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website).
Complainant claims Respondent has attempted to pass itself off as Complainant by imitating Complainant’s GOOGLE PLAY logo in addition to offering similar services as Complainant. Respondent’s attempt to pass itself off as Complainant 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s current use of the disputed domain name to offer game applications for download disrupts Complainant’s business. Respondent’s disputed domain name resolves to a website which offers game applications similar to Complainant’s services, which may well divert Internet traffic from Complainant to Respondent (especially since Respondent uses Complainant’s logo). The Panel finds Respondent’s use of the disputed domain name to offer competing game applications while using Complainant’s logo shows bad faith registration and use under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent’s current use of the disputed domain name to offer game applications for download demonstrates Respondent’s intent to attract Internet users to Respondent’s website, for which Respondent presumably profits in some manner. Respondent’s disputed domain name resolves to a webpage that provides game applications for download, similar to Complainant’s GOOGLE PLAY services. Complainant argues that Internet users may be confused into believing Respondent’s website is somehow affiliated with Complainant. The Panel finds Respondent’s use of the disputed domain name to attract Internet users for its own commercial gain demonstrates bad faith registration and use under 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 the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant points out it is extremely unlikely Respondent created the domain name independently based on the fame and unique qualities of the GOOGLE mark. Complainant contends the GOOGLE mark was adopted and registered by Complainant years prior to Respondent’s registration disputed domain name. While panels have often concluded constructive notice is not sufficient to support a bad faith finding, the Panel finds Respondent had actual knowledge of the GOOGLE mark and Complainant's rights due to the fame of Complainant's GOOGLE mark and Respondent’s use of Complainant’s logos. Thus, the Panel concludes 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <g00gle-play.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 14, 2013
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