Google Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1212001473976
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleplay-ru.net>, registered with Internet.bs Corp.
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.
Darryl C. Wilson, 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 10, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <googleplay-ru.net> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@googleplay-ru.net. Also on December 11, 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 8, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
a) Complainant has rights in the GOOGLE mark.
a. The mark is used in connection with one of the largest, most highly-recognized search engine services in the world. The mark is also attributed to the Google Play store, and 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.
b. Complainant is the owner of registrations with the United States Patent and Trademark Office (“USPTO”) for the GOOGLE mark (e.g., Reg. No. 2,806,075 registered Jan. 20, 2004). See Complainant’s Exhibit 8A.
c. Complainant is the owner of registrations with the Panama Directorate General of the Industrial Property Registry (“DGIPR”) for the GOOGLE mark (e.g., Reg. No. 142,241 registered May 5, 2005). See Complainant’s Exhibit 8B.
b) The <googleplay-ru.net> domain name is confusingly similar to the GOOGLE mark.
a. Respondent’s changes, the addition of the descriptive term “play,” the Russian country-code “ru,” a hyphen, and the generic top-level domain (“gTLD”) “.net,” do not differentiate the disputed domain name from the GOOGLE mark.
c) Respondent does not have rights or legitimate interests in the <googleplay-ru.net> domain name.
a. Respondent is not commonly known by the <googleplay-ru.net> domain name. Respondent’s WHOIS information in connection with the <googleplay-ru.net> domain name makes no mention of the domain name or Complainant’s mark as Respondent’s name or nickname. Additionally, Complainant has not authorized or licensed Respondent to use any of its trademarks in any way.
b. The underlying website to which the <googleplay-ru.net> domain name resolves purports to offer a number of competing and counterfeit mobile applications for download.
c. The disputed domain name resolves to a website that is blocked by anti-virus software due to its identification as a “phishing URL.” See Complainant’s Exhibit 11.
d) Respondent registered and uses the <googleplay-ru.net> domain name in bad faith.
a. Respondent’s use of the <googleplay-ru.net> domain name to provide applications for download in competition with Complainant’s applications is disruptive to Complainant’s business.
b. Respondent’s competing and counterfeit use of the <googleplay-ru.net> domain name demonstrates Respondent’s purpose of confusing Internet users into believing that Respondent’s website is somehow affiliated with Complainant and then capitalizing on that confusion.
c. Respondent had knowledge of Complainant’s rights in the GOOGLE prior to registering and using the <googleplay-ru.net> domain name. The GOOGLE mark is famous and unique and was registered by Complainant years prior to the registration of the <googleplay-ru.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google, Inc. who lists its address as Mountain View, CA USA. The GOOGLE name was created in 1997 and since that time has become renowned as one of the largest, most highly recognized, and widely used Internet services in the world. Complainant owns numerous USA and other foreign registrations for the GOOGLE mark dating back to 1999. Amongst Complainant’s goods and services offered is the Google Play store. Complainant provides online services regarding Google Play at <play.google.com/about> and at Complainant’s primary website <google.com>. Complainant also has applied for registration of the mark GOOGLE PLAY.
Respondent is Fundacion Private Whois Domain Administrator who lists its address as Zone 15 Panama. The disputed domain name was registered with a company who list its address as Nassau, N-4892, Bahamas. Respondent registered the <googleplay-ru.net> domain name on June 7, 2012.
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 contends that it has rights in the GOOGLE mark. Complainant asserts that the mark is used in connection with one of the largest, most highly-recognized search engine services in the world. Complainant argues that the mark is also attributed to 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 demonstrates to the Panel that Complainant is the owner of registrations with the USPTO for the GOOGLE mark (e.g., Reg. No. 2,806,075 registered Jan. 20, 2004), and owner of registrations with the Panama DGIPR for the GOOGLE mark (e.g., Reg. No. 142,241 registered May 5, 2005). See Complainant’s Exhibit 8A and 8B. The Panel finds that Complainant has rights in the GOOGLE mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that the <googleplay-ru.net> domain name is confusingly similar to the GOOGLE mark. Complainant contends that Respondent’s changes, the addition of the descriptive term “play,” the Russian country-code “ru,” a hyphen, and the gTLD “.net,” do not differentiate the disputed domain name from the GOOGLE mark. In Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), the Panel held that the addition of hyphens and a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Additionally, panels have held that the addition of descriptive and geographic terms does not remove a domain name from the realms of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). The Panel finds that the <googleplay-ru.net> domain name is confusingly similar to the GOOGLE mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent does not have rights or legitimate interests in the <googleplay-ru.net> domain name. Complainant claims that Respondent is not commonly known by the <googleplay-ru.net> domain name. Complainant notes that Respondent’s WHOIS information in connection with the <googleplay-ru.net> domain name makes no mention of the domain name or Complainant’s mark as Respondent’s name or nickname. The Panel notes that the WHOIS record for the disputed domain name lists “Fundacion Private Whois / Domain Administrator” as the domain name registrant. Additionally, Complainant asserts that it has not authorized or licensed Respondent to use any of its trademarks in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s use of the <googleplay-ru.net> domain name further evidences a lack of rights and legitimate interests. Complainant notes that the underlying website to which the <googleplay-ru.net> domain name resolves purports to offer a number of competing and counterfeit mobile applications for download. See Complainant’s Exhibit 11. The panels in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011), held that the offering of competing goods and services and/or counterfeit versions of the complainant’s goods is not a use which falls within the bounds of Policy ¶¶ 4(c)(i) and 4(c)(iii). The Panel finds that Respondent’s use of the <googleplay-ru.net> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant next alleges that the dispute domain name resolves to a website that is blocked by anti-virus software due to its identification as a “phishing URL.” See Complainant’s Exhibit 11. Panels have previously held that the operation of a phishing scheme via a disputed domain name is not a use under which the respondent may purport to have rights or legitimate interests in the disputed domain name. See Australia & New Zealand Banking Group Ltd. v. Kim, FA 1366558 (Nat. Arb. Forum Feb. 18, 2011) (holding that the respondent lacks rights and legitimate interests in the disputed domain name when the respondent used the disputed domain name to promote a phishing scheme). The Panel finds that Respondent does not have rights or legitimate interests in the <googleplay-ru.net> domain name pursuant to Policy ¶ 4(a)(ii) given the operation of a phishing scheme on the <googleplay-ru.net> domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent registered and uses the <googleplay-ru.net> domain name in bad faith. According to Complainant, Respondent’s use of the <googleplay-ru.net> domain name to provide applications for download in competition with Complainant’s applications is disruptive to Complainant’s business. The panels in DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), and Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011), held that the offering of competitive and/or counterfeit products via a disputed domain name is disruptive to a complainant’s business. The Panel finds that Respondent’s registration and use of the <googleplay-ru.net> domain name is a product of bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s bad faith is further demonstrated under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s competing and counterfeit use of the <googleplay-ru.net> domain name demonstrates Respondent’s purpose of confusing Internet users into believing that Respondent’s website is somehow affiliated with Complainant and then capitalizing on that confusion. The Panel finds that Respondent is attempting to attract, for commercial gain, Internet users to the disputed domain name by creating confusion as to the source of the <googleplay-ru.net> domain name. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).Therefore, the Panel finds that, under Policy ¶ 4(b)(iv), Respondent registered and uses the <googleplay-ru.net> domain name in bad faith.
Complainant asserts that Respondent’s <googleplay-ru.net> domain name is used in connection with a phishing scheme. Complainant notes that the disputed domain name resolves to a website that is blocked by anti-virus software due to its identification as a “phishing URL.” See Complainant’s Exhibit 11. Panels have held that phishing schemes indicate bad faith. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). The Panel finds that the alleged facts further support a finding that Respondent registered and uses the <googleplay-ru.net> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <googleplay-ru.net > domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 18, 2013
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