Google Inc. v. Maxim Komarov
Claim Number: FA1212001475319
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington, D.C. Respondent is Maxim Komarov (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <googleplay.biz>, <google-play.info>, and <google-play.org>, registered with Godaddy.Com, LLC.
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 10, 2012; the National Arbitration Forum received payment on December 11, 2012.
On December 11, 2012, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, LLC 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 January 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2013 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.biz, postmaster@google-play.info and, postmaster@google-play.org. Also on January 8, 2013, 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 February 5, 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 names be transferred from Respondent to Complainant.
A. Complainant alleges:
1. Complainant’s GOOGLE mark is well known around the world.
2. Complainant owns rights in the GOOGLE mark through its registrations with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 2,806,075 registered Jan. 20, 2004;
Reg. No. 2,954,071 registered May 24, 2005; &
Reg. No. 2,2884,502 registered Sept. 14, 2004.
3. Complainant owns rights in the GOOGLE mark through its registrations with the Russian Federal Service for Intellectual Property (ROSPATENT) (e.g., Reg. No. 191,819 registered August 2, 2000);
4. Complainant began using the GOOGLE PLAY mark on March 6, 2012 and owns pending applications for the mark with the USPTO:
Serial No. 85,563,165 filed March 7, 2012 and
Serial No. 85,560,994 filed March 5, 2012.
5. The WHOIS information for Respondent lists “Viacheslav Semenchuk” as the registrant of the domain names.
6. The <googleplay.biz>, <google-play.info>, and <google-play.org> domain names are confusingly similar to Complainant’s GOOGLE mark.
7. Respondent’s disputed domain names add the generic top-level domain (“gTLD“) “.biz,” “.info,” or “.org” as well as the addition of a hyphen in the <google-play.info>, and <google-play.org> domain names.
8. Complainant has not authorized Respondent to register or use the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names.
9. Respondent is not affiliated or associated with Complainant or its company.
10. Respondent is not commonly known by the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names.
11. Respondent is attempting to pass itself off as the Russian version of Complainant’s business.
12. Respondent has no rights or legitimate interests in the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names.
13. Respondent was not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names when it previously used the disputed domain names to attempt to pass itself off as Complainant online. The resolving websites closely mimicked the design of the GOOGLE PLAY website.
14. After Complainant attempted to contact Respondent, Respondent removed the content from the disputed domain names so that each disputed domain name now resolves to a blank webpage, which is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
15. Respondent’s <googleplay.biz>, <google-play.info>, and <google-play.org> domain names were registered and are being used in bad faith.
16. Respondent had knowledge of Complainant’s GOOGLE and GOOGLE PLAY marks and registered the disputed domain names on the same day or within days of the introduction of Complainant’s services under the GOOGLE PLAY mark, which provides compelling evidence that the domain names were registered with a bad faith intent.
17. Respondent’s attempt to pass itself off as Complainant at the resolving websites is evidence of bad faith registration and use. As a result of the similarity, viewers were likely to mistakenly believe that the resolving websites were affiliated with or sponsored by Complainant, thereby allowing Respondent to commercially benefit by trading upon the goodwill established in Complainant’s marks.
18. Respondent’s disputed domain names currently resolve to blank pages, which is also evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google Inc., who list its address as Mountain View, CA, USA. The GOOGLE name and company were created in 1997 by Larry Page and Sergey Brin. The GOOGLE name has been continuously used since that time primarily as a search engine available to computer users around the world. Complainant’s primary website is <google.com> but Complainant owns and operates hundreds of additional GOOGLE-formative domain names, including nearly all top level country code domains solely consisting of GOOGLE. Complainant owns numerous domestic and foreign trademark registrations for the GOOGLE mark dating back as early as 1998. Google began using GOOGLE PLAY as a mark on March 6, 2012 and filed applications for trademark registration domestically and abroad on or around the date of first use. Complainant also owns the domain name<googleplay.com> which it registered on June 2, 2010.
Respondent is Maxim Komarov who list its address as Moscow, Russian Federation. Respondent registered the disputed domain names with a registrar who’s address is listed as Scottsdale, AZ, USA. The domain names were registered on March 6, 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 states that the GOOGLE mark and Complainant’s company were created in 1997. Complainant claims that its GOOGLE search engine is now one of the largest and widely used Internet services in the world. Complainant asserts that it has been recognized as one of the most popular destinations on the Internet resulting in the GOOGLE mark symbolizing the goodwill associated with Complainant’s business. Complainant presents evidence of its registration for the GOOGLE mark with the USPTO:
Reg. No. 2,806,075 registered Jan. 20, 2004;
Reg. No. 2,2884,502 registered Sept. 14, 2004; &
Reg. No. 2,954,071 registered May 24, 2005.
Complainant further provides evidence of its trademark registrations with the Russian Federal Service for Intellectual Property-ROSPATENT (e.g., Reg. No. 191,819 registered August 2, 2000).
Complainant alleges that it began using the GOOGLE PLAY mark on March 6, 2012 and owns pending applications for the mark with the USPTO:
Serial No. 85,563,165 filed March 7, 2012 and
Serial No. 85,560,994 filed March 5, 2012.
Previous panels have found that evidence of a registration for a given mark with a reliable trademark authority is sufficient to establish rights in a given mark. 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’)”). Based on Complainant’s registrations with the USPTO and ROSPATENT, the Panel finds that Complainant has rights in the GOOGLE mark.
Complainant claims that the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names are confusingly similar to Complainant’s GOOGLE mark. Complainant argues that the disputed domain names contain Complainant’s GOOGLE mark in its entirety along with the addition of the gTLD “.biz,” “.info,” or “.org.” Complainant notes the <google-play.info>, and <google-play.org> domain names also add a hyphen. The Panel notes that all of the disputed domain names add the generic term “play” to Complainant’s GOOGLE mark, which likely refers to Complainant’s GOOGLE PLAY mark. Previous panels have found that these variations are insufficient to distinguish a disputed domain name from a registered mark under Policy ¶ 4(a)(i). See Internet Employment Linkage, Inc. v. Kuhne, FA1011316 (Nat Arb. Forum July 31, 2007) (finding that the addition of the gTLDs “.com,” “.org,” and “.info” are insufficient to distinguish a disputed domain name from a given mark under Policy ¶ 4(a)(i).) See also Exxon Mobil Corp. v. Prop. Mgmt. Professional, FA 1059655 (Nat. Arb. Forum Sept. 25, 2007) (finding a registered mark confusingly similar to a disputed domain name where the disputed domain name contained complainant’s mark in its entirety with the addition of the gTLD “.biz.”); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also 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 finds that Respondent’s <googleplay.biz>, <google-play.info>, and <google-play.org> domain names are confusingly similar to Complainant’s 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 claims that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names under Policy ¶ 4(c)(ii). Complainant states that it has not authorized or licensed Respondent to use its mark in any way and claims that Respondent is not affiliated with or endorsed by Complainant. Complainant further points out that the WHOIS information for Respondent lists “Maxim Komarov” as registrant of the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names. Previous panels have routinely found that when a Respondent is not known by a mark and the WHOIS information does not indicate otherwise, the Respondent has no rights or legitimate interests in a disputed domain name. 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). The Panel finds that Respondent is not commonly known by the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s <googleplay.biz>, <google-play.info>, and <google-play.org> domain names previously resolved to websites where Respondent attempted to pass itself off as Complainant. Complainant asserts that the resolving websites mimicked Complainant’s GOOGLE PLAY website and that attempting to pass itself off as Complainant’s legitimate business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The Panel notes that Complainant provides screenshots for the websites resolving from the <google-play.info>, and <google-play.org> domain names. These resolving pages feature headings such as, “Angry Birds Seasons,” “AD Blocker amp Data Toggle,” “SEO SERP Tracker PREMIUM,” “Ring Ring Ringtones,” “TimeClock Time Tracker,” and “Tiny DVR Recorder.” The websites also feature pictures of different games and technologies with links and headings featured in a different language. See Annex 12. Complainant also provides a screenshot of Complainant’s legitimate website displaying images of different books, magazines, tv shows, movies, games, and Phone apps. See Annex 10. The Panel notes that Complainant did not provide a screenshot from the <googleplay.biz> domain name other than the screenshot resolving to a blank page. Previous panels have found that a Respondent attempting to pass itself as Complainant’s legitimate business at a resolving website is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel finds that Respondent’s prior use of the disputed domain names was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Complainant claims that Respondent’s current use of the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names is to resolve to blank websites, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The Panel notes Annex 14 displaying the screenshots of the disputed domain names resolving to blank webpages. Previous panels have found that a Respondent’s non-use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s failure to use the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
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 argues that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant claims that Respondent previously displayed the GOOGLE and GOOGLE PLAY marks on its resolving websites in an attempt to mimic Complainant’s legitimate website and pass itself off as Complainant. See Annex 12. Complainant claims that Respondent’s prior use of Complainant’s registered GOOGLE mark and display of related content on the resolving websites led Internet users to believe that Respondent’s websites resolving from the <google-play.info> and <google-play.org> domain names are Complainant’s Russian language versions of Complainant’s websites. Complainant asserts that Respondent was commercially profiting by trading upon the goodwill that Complainant’s company has established. Previous panels have found bad faith when a Respondent registers a confusingly similar domain name to attract and confuse Internet users and thereby commercially profits from that confusion. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). The Panel finds that Respondent registered and was using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that after Complainant attempted to contact Respondent, Respondent removed the content from the resolving websites so that the <googleplay.biz>, <google-play.info>, and <google-play.org> domain names now resolve to blank pages, thereby indicating further bad faith use. Previous panels have traditionally found that failure to make an active use of a website resolving from a disputed domain name indicates that a Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). The Panel finds that Respondent’s use of the disputed domain names to resolve to blank pages indicates 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.biz>, <google-play.info>, and <google-play.org> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 18, 2013
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