Google Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1304001495039
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <googleplay-russian.com>, registered with INTERNET.BS CORP.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 15, 2013; the National Arbitration Forum received payment April 16, 2013.
On April 18, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <googleplay-russian.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. verified that Respondent is bound by the INTERNET.BS CORP. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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-russian.com. Also on April 18, 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 May 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Respondent is not commonly known as the domain name or any name containing Complainant’s marks.
ii. Respondent’s domain name resolves to a website that has been blocked from access by anti-virus software, flagged as “dangerous” and identified as a site “that directly or indirectly facilitates the distribution of malicious software or source code.” In addition, when not blocked by anti-virus software, the domain name resolves to a site that contains links to an identified malware website.
iii. Respondent’s domain name resolves to a website that mimics the look and feel of the official GOOGLE PLAY market for Android applications, purports to offer applications for download, which may well have been pirated from the GOOGLE PLAY store, and appears to offer for free, highly-ranked applications that are offered for purchase by Complainant.
i. Respondent’s current use of the domain name is not only to ostensibly offer applications, which may have been pirated from the GOOGLE PLAY store, for download, in competition with the services provided by Complainant; but also to undercut Complainant’s business by offering for free, paid applications sold by Complainant—all through a website that mimics the appearance of the official GOOGLE PLAY store.
ii. Respondent, for its own benefit, ostensibly uses the domain name to facilitate the distribution of malicious software to Internet users, who are diverted to the <googleplay-russian.com> website. Respondent is attempting to divert Internet users seeking Complainant’s GOOGLE PLAY store to the website associated with the domain name, presumably for Respondent’s commercial gain.
iii. Even constructive knowledge of a famous mark like GOOGLE is not sufficient to support findings of bad faith registration and use; however, use by Respondent suggests that Respondent had actual knowledge of Google’s rights in its well-known mark.
Complainant established that it has rights to or legitimate interests in the mark contained within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant, Google Inc., argues that it owns and operates the GOOGLE search engine, which has become one of the largest, most highly-recognized, and widely-used Internet search services in the world. Complainant asserts that its GOOGLE search engine maintains one of the world’s largest collections of searchable documents. Complainant contends that it is the owner of trademark registrations with the USPTO for the GOOGLE mark (e.g., 2,806,075, registered January 20, 2004) and for the GOOGLE PLAY mark (Serial No. 85,560,994, filing date March 5, 2012). See Complainant’s Annex 8. Complainant claims that it is also the owner of trademark registrations with Panama’s Ministry of Commerce and Industries for the GOOGLE mark (e.g., Reg. No. 142,241, filing date May 5, 2005). See Complainant’s Annex 8. The Panel notes that Respondent appears to reside in Panama. Accordingly, the Panel finds that Complainant’s registration of the GOOGLE mark with the USPTO and other trademark agencies sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Grp., 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’)”).
Complainant contends that a comparison of the <googleplay-russian.com> domain name with the GOOGLE mark shows that Respondent, in registering the domain name, has merely included the term “play.” Complainant argues that 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. The Panel finds that Respondent’s addition of a descriptive term to Complainant’s mark does not negate confusing similarity pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Complainant asserts that Respondent adds the geographic term “russian” to the disputed domain name. The Panel finds that the addition of a geographic term does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See 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).
Complainant asserts that Respondent adds a hyphen to Complainant’s mark in the disputed domain name. The Panel finds that the addition of a hyphen does not differentiate Respondent’s disputed domain from Complainant’s mark pursuant to 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).”). Complainant claims that Respondent adds the gTLD “.com” to the disputed domain name. The Panel finds that Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Therefore, the Panel finds that Respondent’s <googleplay-russian.com> domain name is confusingly similar to Complainant’s GOOGLE mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show that it does have such 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 of proof 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 contends that Respondent is not commonly known by the domain name or any name containing Complainant’s marks. Complainant argues that Respondent’s WHOIS information in connection with the domain name does not list Complainant’s marks as Respondent’s name or nickname. The Panel notes that the WHOIS information lists “Fundacion Private Whois / Domain Administrator” as the registrant of the disputed domain name. See Complainant’s Annex 4. Complainant argues that it has not authorized or licensed Respondent to use any of its trademarks in any way. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 argues that Respondent’s domain name resolves to a website that has been blocked from access by anti-virus software, flagged as “dangerous” and identified as a site “that directly or indirectly facilitates the distribution of malicious software or source code.” See Complainant’s Annexes 12 and 13. Complainant argues that when not blocked by anti-virus software, the domain name resolves to a site that contains links to an identified malware website. See Complainant’s Annexes 12 and 13. Complainant asserts that Respondent’s domain name resolves to a website that mimics the look and feel of the official GOOGLE PLAY market for Android applications, purports to offer applications for download, which may well have been pirated from the GOOGLE PLAY store, and appears to offer for free highly-ranked applications that are offered for purchase by Complainant. See Complainant’s Annex 14. Therefore, the Panel finds that Respondent’s use of the disputed domain name to host malware or to provide competing applications is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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 create any semblance 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)”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent’s current use of the domain name is not only to ostensibly offer applications, which may have been pirated from the GOOGLE PLAY store, for download in competition with the services provided by Complainant, but also to undercut Complainant’s business by offering for free paid applications sold by Complainant—all through a website that mimics the appearance of the official GOOGLE PLAY store. See Complainant’s Annex 14. The Panel finds that Respondent’s use of the disputed domain name to feature competing applications disrupts Complainant’s business according to 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 contends that Respondent, for its own benefit, ostensibly uses the domain name to facilitate the distribution of malicious software to Internet users, who are diverted to the <googleplay-russian.com> website. See Complainant’s Annexes 12 and 13. Complainant argues that Respondent is attempting to divert Internet users seeking Complainant’s GOOGLE PLAY store to the website associated with the domain name, and presumably, for Respondent’s commercial gain. See Complainant’s Annex 14. The Panel finds that Respondent’s use of the disputed domain name to host malware or to feature competing applications evidences bad faith use and registration under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also 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 argues that even constructive knowledge of a famous mark like GOOGLE is sufficient to establish registration in bad faith. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark and Respondent’s subsequent use of the domain name, Respondent had actual knowledge of the mark and Complainant's rights in it. Thus, the Panel finds that 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is ORDERED that the disputed domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 30, 2013.
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