Google Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1301001483114
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-russia.com>, registered with INTERNET.BS CORP.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2013; the National Arbitration Forum received payment on February 4, 2013.
On February 13, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <googleplay-russia.com> 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 February 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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-russia.com. Also on February 13, 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 March 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
Policy ¶ 4(a)(ii): Respondent’s Lack of Rights & Legitimate Interests
Policy ¶ 4(a)(iii): Bad Faith
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its GOOGLE and GOOGLE PLAY marks.
2. Respondent’s <googleplay-russia.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 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 to the GOOGLE mark by way of registration of the mark with a variety of trademark agencies. See USPTO (Reg. No. 2,884,50 registered Sept. 14, 2004); see also PTRO (Reg. No. 142,240 registered May 5, 2006). The Panel agrees that Complainant has made a sufficient showing of rights in the GOOGLE mark because of these trademark registrations. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel holds that Complainant has rights in the GOOGLE mark under Policy ¶ 4(a)(i).
Complainant also asserts rights in the GOOGLE PLAY mark. While Panels have found that registration of a mark is sufficient to demonstrate rights, registration of a trademark is by no means necessary to establish rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Rather, the Panel considers all arguments regarding Complainant’s use and contribution to the development and viability of the mark to determine if secondary meaning has been generated.
Complainant argues that it also has common law rights in the GOOGLE PLAY mark. Complainant notes that it first used the mark in March 2012, nine months prior to this disputed domain name’s registration. Complainant asserts that the GOOGLE PLAY mark was launched with significant public fanfare in a press conference. Complainant notes that the GOOGLE PLAY mark presently offers over 675,000 applications for download and as of September 2012 the service has proliferated over 25 billion downloads. Previous panels have agreed that a complainant can acquire common law rights in a mark when the complainant has given the mark a secondary meaning, distinct from the meaning the general public would ordinarily place on the phrase absent the complainant’s use of the phrase in a mark. See Cybertania, Inc. v. Right Mobile, Inc. Domain Manager, FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶ 4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark). The Panel agrees and concludes that Complainant has common law rights in the GOOGLE PLAY mark under Policy ¶ 4(a)(i).
Complainant believes that this <googleplay-russia.com> domain name is confusingly similar to the GOOGLE PLAY mark. Complainant notes that the domain name includes the entire GOOGLE PLAY mark, the addition of the geographic term “russia” and the gTLD “.com.” The Panel also notes that Complainant has deleted the spacing in the GOOGLE PLAY mark in forming this domain name, and has added a hyphen. The Panel agrees that neither the deletion of spacing nor the addition of a gTLD and hyphen are relevant to this analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel further agrees that the addition of the geographic term “russia” does nothing to help eliminate confusing similarity. See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to the complainant’s registered SUNKIST mark and identical to the complainant’s common law SUNKIST GROWERS mark). Thus the Panel concludes that the <googleplay-russia.com> domain name is confusingly similar to the GOOGLE PLAY mark under Policy ¶ 4(a)(i).
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); 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 proclaims that Respondent is not commonly known as the disputed domain name or any other names that feature either GOOGLE or GOOGLE PLAY. Complainant avows that it has not authorized or licensed Respondent to use its trademark in any domain name. The Panel notes that the WHOIS information lists “Fundacion Private Whois / Domain Administrator” as the registrant of the domain name. The Panel agrees that based upon this record, Respondent is not commonly known by the <googleplay-russia.com> domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also argues that Respondent has not provided a bona fide offering of goods and services or a legitimate noncommercial or fair use. Complainant notes that Respondent’s domain name resolves to a website purporting to offer applications for download, thereby competing with Complainant’s own services. Complainant disclaims that in other instances, the Internet users’ anti-virus software will shelter them from the content of the domain name’s website by informing the user that the website contains “malicious software.” The Panel notes that when the domain name’s content is not blocked by anti-virus software, the domain name resolves to a website referred to as “MyProgramms” which lists an array of web applications, with purported user reviews for each application. See Complainant’s Ex. 11. The Panel agrees that Respondent’s use of the <googleplay-russia.com> domain name to offer services in direct competition with those offered by Complainant illustrates neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant has noted that the disputed domain name sometimes threatens Internet users with the download of malicious software. Panels have previously found that domain names which cause unwanted malware downloading onto Internet users’ computers is evidence of a lack of rights and legitimate interests. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to demonstrate any semblence of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent further demonstrates its lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the domain name to disrupt Complainant’s business. Complainant bases this on the fact that the <googleplay-russia.com> domain name is offering services in direct competition with Complainant’s business. The Panel again notes that assuming the Internet user’s anti-virus software does not prevent them from accessing the website, the user will be provided with a list of applications which are purportedly for download from Respondent’s disputed domain name’s website. See Complainant’s Ex. 11. The Panel agrees that there is no clearer, textbook example of bad faith disruption under Policy ¶ 4(b)(iii) than Respondent’s decision to use a disputed domain name to offer a service that competes directly with Complainant. 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 argues that it is Respondent’s intent to confuse Internet users into believing that Complainant is somehow at the source of the content available at the <googleplay-russia.com> domain name. Complainant believes that Respondent is seeing profits from this endeavor. The Panel agrees that the use of a disputed, confusingly similar, domain name such as the <googleplay-russia.com> domain name to offer goods similar to those offered under Complainant’s mark and via a website similar to Complainant’s website is indicative of Policy ¶ 4(b)(iv) bad faith use and registration through confusion of Internet users. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant further avers that Respondent’s registration and use of this domain name in bad faith is evidenced by its decision to resolve the domain name to a website that is blocked due to the presence of malicious software. The Panel notes that some Internet users are warned by the anti-virus software that the content available on the domain name’s website is malicious. See Complainant’s Ex. 11. The Panel agrees that it is clearly Policy ¶ 4(a)(iii) bad faith use and registration of Respondent to use this domain name for purposes of propagating malicious software and viruses. See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Complainant finally contends that it is highly unlikely that Respondent registered the domain name without having constructive or actual knowledge of Complainant’s rights in the mark. Complainant bases this on the similarities between the layout of Respondent’s website and Complainant’s own websites. Panels have generally held that constructive knowledge alone is insufficient for a finding of bad faith. 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."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <googleplay-russia.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <googleplay-russia.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 2, 2013
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