Google Inc. v. NURINET / Noorinet / NURINET
Claim Number: FA1305001502299
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is NURINET (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <apadandroid.com>, <g1android.com>, <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, <okgoogle.com>, <tablets-android.com>, and <youtube1.com>, registered with Netpia.Com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2013; the National Arbitration Forum received payment on May 30, 2013.
On August 1, 2013, Netpia.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <apadandroid.com>, <g1android.com>, <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, <okgoogle.com>, <tablets-android.com>, and <youtube1.com> domain names are registered with Netpia.Com, Inc. and that Respondent is the current registrant of the names. Netpia.Com, Inc. has verified that Respondent is bound by the Netpia.Com, Inc. 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 August 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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@apadandroid.com, postmaster@g1android.com, postmaster@google24.com, postmaster@googleadd.com, postmaster@google-ads.com, postmaster@googleaudio.com, postmaster@googleblue.com, postmaster@googleface.com, postmaster@googlefarm.com, postmaster@googlefilter.com, postmaster@googleforbusiness.com, postmaster@googleiran.com, postmaster@googlemagic.com, postmaster@googlemanager.com, postmaster@googleoptimierung.com, postmaster@googletaxi.com, postmaster@googletm.com, postmaster@googlevirus.com, postmaster@okgoogle.com, postmaster@tablets-android.com, and postmaster@youtube1.com. Also on August 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 September 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
1. Complainant, Google Inc., runs a renowned search engine service offered under the GOOGLE mark.
2. Complainant owns and operates hundreds of domain names including the GOOGLE mark.
3. Complainant offers a software platform and operating system utilizing the ANDROID mark.
4. YouTube, LLC is a wholly-owned subsidiary of Complainant.
a. The YOUTUBE mark is used in association with the video sharing service allowing billions of people to watch originally created videos.
b. The YOUTUBE mark was created in 2005 and registered the <youtube.com> domain name on February 14, 2005.
c. Complainant acquired YouTube, LLC in 2006, and in 2007 YouTube, LLC assigned its YOUTUBE trademark to Complainant.
5. Complainant has rights in the GOOGLE, ANDROID, and YOUTUBE marks through its registrations with the USPTO as well as with other countries around the world.
a. Respondent registered the disputed domain names significantly after Complainant established rights in its GOOGLE, ANDROID, and YOUTUBE marks.
b. GOOGLE
i. USPTO: (Reg. No.2,884,502 registered September 14, 2004); (Reg. No. 2,806,075 registered January 20, 2004); (Reg. No. 2,954,071 registered May 24, 2005).
ii. Canadian Intellectual Property Office (“CIPO”): (Reg. No. 539,576 registered January 12, 2001); (Reg. No.748,766 registered September 28, 2009).
iii. China’s State Administration for Industry and Commerce (“SAIC”): (Reg. No. 5,556,520 registered December 7, 2009); (Reg. No. 1,473,896 registered November 14, 2000); (Reg. No. 1,451,705 registered September 28, 2000).
iv. WIPO: (Reg. No. 859851 registered April 28, 2005); (Reg. No. 860,242 registered April 28, 2005)
c. ANDROID
i. USPTO: Application number 77/318,565.
ii. SAIC: (Reg. No. 6363165 registered March 28, 2010); (Reg. No. 8272005 registered May 14, 2011).
iii. Superintendencia de Industria y Comercio (“SIC”) (Reg. No. 401,256 registered December 5, 2010).
iv. IP Australia (“IPA”): (Reg. No. 1,208,628 registered January 15, 2009).
d. YOUTUBE
i. USPTO: (Reg. No. 3,711,233 registered October 29, 2008); (Reg. No. 3,525,802 registered January 30, 2006)
ii. CIPO: (Reg. No. 763,995 registered July 31, 2006)
iii. SAIC: (Reg. No. 897,049 registered March 1, 2006)
iv. WIPO: (Reg. No. 991,392 registered December 11, 2008).
6. Complainant asserts that Respondent, NURINET / Noorinet / NURINET, is a single entity operating under two names in order to avoid detection and transfer of the domain names.
7. Respondent’s <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, and <okgoogle.com> domain names are confusingly similar to Complainant’s GOOGLE mark.
8. Respondent’s <apadandroid.com>, <g1android.com>, and <tablets-android.com> domain names are confusingly similar to Complainant’s ANDROID mark.
9. Respondent’s <youtube1.com> domain name is confusingly similar to Complainant’s YOUTUBE mark.
10. Respondent has no rights or legitimate interests in the disputed domain names.
a. Respondent is not commonly known by the disputed domain names.
b. The WHOIS information for the disputed domain names are registered to Noorinet/ NURINET, which are phonetically identical registrant names.
c. Complainant has not authorized or licensed Respondent to use any of its trademarks.
d. The disputed domain names resolve to either a parked page, competing page, or one that offers the domain name for sale.
e. Twenty of the domain names resolve to websites featuring identical content.
i. Respondent’s <apadandroid.com>, <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, <okgoogle.com>, <tablets-android.com>, and <youtube1.com> domain names resolve to websites featuring identical content.
f. Respondent’s <g1android.com> domain name resolves to a website featuring click through ads and advertising the domain name for sale.
11. Respondent registered and is using the disputed domain names in bad faith.
a. Complainant’s GOOGLE, ANDROID, and YOUTUBE marks are famous.
b. Respondent’s actions suggest a pattern of bad faith registrations.
c. Respondent’s use of the disputed domain names disrupts Complainant’s business.
d. Respondent uses the disputed domain names to resolve to websites aimed at collecting revenue for Respondent.
e. Respondent’s use of the disputed domain name intends to attract Internet users to Respondent’s websites for commercial gain.
f. Respondent’s registration of 21 domain names that are similar or identical to Complainant’s trademarks indicates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is a single entity operating under two names in order to avoid detection and transfer of the disputed domain names. Complainant argues that the two registrants that are listed include “Noorinet” and “Nurinet.” Complainant points out that these are significantly similar in spelling and phonetically identical registrant names. Complainant further indicates that the same email address is used and three very similar telephone numbers are connected with all of the disputed domain names. Complainant contends that twenty of the disputed domain names resolve to websites featuring identical content. The Panel finds that Complainant that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant, Google Inc., operates a renowned search engine service offered under the GOOGLE mark. Complainant also offers a broad spectrum of technological and mobile products and services. In 2007 Complainant offered a software platform and operating system under the ANDROID mark. Complainant provides phones, tablets, and other devices associated with the ANDROID mark. Complainant owns YouTube, LLC, a video sharing service. Complainant has rights in the GOOGLE, ANDROID, and YOUTUBE marks through its registrations with the USPTO as well as with other countries around the world. For example, see
USPTO: (Reg. No.2,884,502 registered September 14, 2004); (Reg. No. 2,806,075 registered January 20, 2004); (Reg. No. 2,954,071 registered May 24, 2005).
Canadian Intellectual Property Office (“CIPO”): (Reg. No. 539,576 registered January 12, 2001); (Reg. No.748,766 registered September 28, 2009).
China’s State Administration for Industry and Commerce (“SAIC”): (Reg. No. 5,556,520 registered December 7, 2009); (Reg. No. 1,473,896 registered November 14, 2000); (Reg. No. 1,451,705 registered September 28, 2000).
WIPO: (Reg. No. 859851 registered April 28, 2005); (Reg. No. 860,242 registered April 28, 2005).
ANDROID
USPTO: Application number 77/318,565.
SAIC: (Reg. No. 6363165 registered March 28, 2010); (Reg. No. 8272005 registered May 14, 2011).
Superintendencia de Industria y Comercio (“SIC”) (Reg. No. 401,256 registered December 5, 2010).
IP Australia (“IPA”): (Reg. No. 1,208,628 registered January 15, 2009).
YOUTUBE
USPTO: (Reg. No. 3,711,233 registered October 29, 2008); (Reg. No. 3,525,802 registered January 30, 2006).
CIPO: (Reg. No. 763,995 registered July 31, 2006).
SAIC: (Reg. No. 897,049 registered March 1, 2006).
WIPO: (Reg. No. 991,392 registered December 11, 2008).
Respondent, NURINET / Noorinet / NURINET, registered the disputed domain names after Complainant established rights in its GOOGLE, ANDROID, and YOUTUBE marks. The disputed domain names resolve to either a parked page, competing page, or one that offers the domain name for sale. Twenty of the domain names resolve to websites featuring identical content.
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 has rights in the GOOGLE, ANDROID, and YOUTUBE marks under Policy ¶ 4(a)(i) through its registrations with the USPTO as well as with other countries around the world. See Seiko Epson Corp. v. Citizens News Network, FA 1389991 (Nat. Arb. Forum June 30, 2011) (finding that complainant had established Policy ¶ 4(a)(i) rights in its mark through its trademark registrations with the USPTO and CIPO); see also Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)). Evidence of a registration in respondent’s place of business is not necessary, only that complainant can establish rights in some jurisdiction. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s GOOGLE, ANDROID, and YOUTUBE marks. Complainant argues that the <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, and <okgoogle.com> domain names are confusingly similar to Complainant’s GOOGLE mark. Complainant asserts that Respondent’s disputed domain names contain Complainant’s GOOGLE mark in its entirety. Complainant argues that Respondent has simply added descriptive or non-distinctive terms to Complainant’s mark. The disputed domain names contain the addition of either the word: add, ads, audio, blue, face, farm, filter, for business, magic, manager, optimierung, taxi, tm, virus, or ok. The <google24.com> domain name contains the addition of the number 24. The <googleiran.com> domain name contains the geographic term “Iran.” All of the disputed domain names contain the gTLD “.com” and all of the spaces are removed between the words. The <google-ads.com> domain name contains the addition of a hyphen. Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to the complainant’s mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (finding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part) ; see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”) The Panel finds that Respondent’s <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, and <okgoogle.com> domain names are confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <apadandroid.com>, <g1android.com>, and <tablets-android.com> domain names are confusingly similar to Complainant’s ANDROID mark. Respondent’s disputed domain names contain complainant’s ANDROID mark in its entirety with the addition of the gTLD “.com.” The <apadandroid.com> domain name features the term “apad” preceding Complainant’s ANDROID mark. The <g1android.com> domain name features the letter “g” and the number “1” prior to Complainant’s ANDROID mark. Respondent’s <tablets-android.com> domain name contains the term “tablets” and the addition of a hyphen preceding Complainant’s ANDROID mark. Variations such as added words, hyphens, and added gTLDs are insufficient to differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). The Panel finds that the <apadandroid.com>, <g1android.com>, and <tablets-android.com> domain names are confusingly similar to Complainant’s ANDROID mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that respondent’s <youtube1.com> domain name is confusingly similar to Complainant’s YOUTUBE mark under Policy ¶ 4(a)(i). Respondent adds the number “1” and the gTLD “.com” to Complainant’s YOUTUBE mark. The Panel finds that Respondent’s <youtube1.com> domain name is confusingly similar to Complainant’s YOUTUBE 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.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because it is not commonly known by them. Complainant argues that Respondent’s WHOIS information gives no indication that there is a relation between respondent and the disputed domain names. The WHOIS information for the <googleadd.com>, <google-ads.com>, <googleblue.com>, <googleface.com>, <googlefilter.com>,<youtube1.com>, and <g1android.com> domain names list “Noorient” as the registrant of the domain names. The remaining <apadandroid.com>, <google24.com>, <googleaudio.com>, <googlefarm.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, <okgoogle.com>, and <tablets-android.com> domain names list ”Nurinet” as the registrant. Complainant further contends that it has not authorized or licensed Respondent to use any of its trademarks. Previous panels have found that a respondent has no rights or legitimate interests in a disputed domain name if there is no indication on the record signifying a relationship and the complainant has not authorized respondent to use its registered marks. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names under Policy ¶¶ 4(c)(i) and (c)(iii). Complainant claims that Respondent’s <g1android.com> domain name resolves to a website advertising domain names for sale, and featuring pay-per-click ads and search engine bars. The resolving website features links including: “Android,” “shopr.com,” “www.monstermarketplace.com,” “answergrab.com,” and “buy this domain.” Previous panels have found that using a confusingly similar domain name to resolve to a parked website featuring links to third parties that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with 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)).
Complainant contends that Respondent’s use of the <apadandroid.com>, <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, <okgoogle.com>, <tablets-android.com>, and <youtube1.com> domain names do not give Respondent rights and legitimate interests. Complainant argues that the remaining domain names resolve to a website advertising that the domain names are for sale. Complainant states that each of the remaining websites resolve to a page that also features the text: “We are looking for Investors in developing our new Website noori.net. This website is under construction now. However, you can buy this domain showing this webpage if your price is ok. Please send us your offer to auto@dreamwiz.com.” Complainant further asserts that the <g1android.com> domain name resolves to a website featuring the heading “Buy This Domain.” A respondent has no rights or legitimate interests in a disputed domain name where respondent uses a confusingly similar domain name to resolve to a parked page offering to sell a domain name. see Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names under Policy ¶¶ 4(c)(i) and (c)(iii).
Complainant asserts that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(i). Complainant argues that all of the disputed domain names resolve to websites offering to sell the disputed domain names. Complainant contends that the <apadandroid.com>, <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, <okgoogle.com>, <tablets-android.com>, and <youtube1.com> disputed domain names resolve to parked websites featuring the heading “Linecom Trading Co., Ltd’s Internet Team” and “This website is under construction now. However, you can buy this domain showing this webpage if your price is ok. Please send us your offer to auto@dreamwiz.com.” Complainant further claims that the <g1android.com> domain name resolves to a website featuring the heading “Buy This Domain.” Respondent offers the domain names for sale on the face of the resolving websites. Previous panels have found that offering to sell a disputed domain name indicates bad faith use and registration. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”) The Panel finds that Respondent’s attempt to sell the disputed domain names indicates bad faith use and registration under Policy ¶ 4(b)(i).
Complainant contends that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii). Complainant argues that Respondent’s registration of 21 domain names that are confusingly similar to Complainant’s registered marks indicates a bad faith pattern of registrations. Previous panels have found bad faith where a respondent registered multiple confusingly similar domain names to prevent the complainant from reflecting its registered mark in correspondence with a domain name. See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct). The Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and is using the <g1android.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant asserts that Respondent’s operation of a website offering search engine services that compete with Complainant’s business indicates that Respondent is using the disputed domain name to disrupt Complainant’s business. Complainant also claims that featuring links and advertisements that compete with Complainant’s goods and services further indicates bad faith disruption of Complainant’s business. Prior panels have found that using a confusingly similar domain name to display links to products and services which complete with a complainant’s products and services indicates bad faith. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). The Panel finds that Respondent registered and is using the <g1android.com> domain name in bad faith under Policy 4(b)(iii) by competing with and disrupting Complainant’s business.
Complainant argues that Respondent registered and is using the <g1android.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent uses the <g1android.com> domain name to resolve to a website featuring pay-per-click links that generate revenue for Respondent. The website features links such as “ANDROID” referring to Complainant’s registered ANDROID mark. Complainant further contends that Respondent is attracting Internet users to its website by offering a search engine program. Previous panels have found that using a confusingly similar domain name to resolve to a website featuring pay-per-click links from which a respondent financially profits is indicative of bad faith use and registration under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). The Panel finds that Respondent has registered and is using the <g1android.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's GOOGLE, ANDROID, and YOUTUBE marks, it is inconceivable that Respondent could have registered the <apadandroid.com>, <g1android.com>, <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, <okgoogle.com>, <tablets-android.com>, and <youtube1.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. Any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). However, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name which is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apadandroid.com>, <g1android.com>, <google24.com>, <googleadd.com>, <google-ads.com>, <googleaudio.com>, <googleblue.com>, <googleface.com>, <googlefarm.com>, <googlefilter.com>, <googleforbusiness.com>, <googleiran.com>, <googlemagic.com>, <googlemanager.com>, <googleoptimierung.com>, <googletaxi.com>, <googletm.com>, <googlevirus.com>, <okgoogle.com>, <tablets-android.com>, and <youtube1.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 24, 2013
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