Google Inc. v. Privat Person / Boris Gubarev
Claim Number: FA1306001505574
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Privat Person / Boris Gubarev (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <proandroids.com>, registered with CLICK REGISTRAR, INC. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2013; the National Arbitration Forum received payment on June 20, 2013.
On June 20, 2013, CLICK REGISTRAR, INC. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <proandroids.com> domain name is registered with CLICK REGISTRAR, INC. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. CLICK REGISTRAR, INC. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the CLICK REGISTRAR, INC. D/B/A PUBLICDOMAINREGISTRY.COM 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 June 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@proandroids.com. Also on June 24, 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 July 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Complainant has not authorized or licensed Respondent to use any of its trademarks.
ii. The domain name resolves to a website that has been monetized with click-through ads.
iii. Furthermore, by using a logo that is nearly identical to Complainant’s ANDROID logo, Respondent attempts to pass itself off as Complainant.
i. Respondent’s operation of a website offering application and game downloads in competition with Complainant indicates that Respondent has registered and is using the domain name in bad faith to disrupt Complainant’s business. Respondent’s website features click-through advertisements for “UC Browser,” a web browser that competes with Complainant’s own “CHROME” web browser.
ii. Respondent’s use of the domain name to generate revenue using pay-per-click advertising likewise constitutes bad faith use and registration.
iii. The fame and unique qualities of the ANDROID mark make it extremely unlikely that Respondent created the domain name independently.
B. Respondent has not submitted a Response to this case.
1. Respondent’s <proandroids.com> domain name is confusingly similar to Complainant’s ANDROID mark.
2. Respondent does not have any rights or legitimate interests in the <proandroids.com> domain name.
3. Respondent registered or used the <proandroids.com> 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 offered a software platform and operating system under the ANDROID mark. Complainant asserts that its ANDROID program is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices. Complainant argues that it is the owner of trademark registrations with the UACRR for the ANDROID mark (e.g., Reg. No. 103,637 registered February 25, 2009). See Exhibit 8. The Panel notes that Complainant has also registered its ANDROID mark with multiple trademark agencies throughout the world. See, e.g., United Kingdom Patent and Trademark Office ("UKPTO") Reg. No. 2,530,935 registered on Apr. 23, 2010. The Panel finds that because Respondent appears to reside in Ukraine, Complainant’s registration of the ANDROID mark with the UACRR and various trademark agencies throughout the world sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that Respondent’s domain name is nearly identical and confusingly similar to Complainant’s ANDROID mark. Complainant contends that a domain name registrant may not avoid likely confusion by simply adding a descriptive or non-distinctive term to another’s mark. The Panel notes that Respondent adds the generic term “pro” to Complainant’s ANDROID mark in its <proandroids.com> domain name. The Panel holds that Respondent’s inclusion of a generic term to Complainant’s mark in a domain name does not differentiate the domain name from Complainant’s mark. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel notes that Respondent adds the letter “s” to Complainant’s ANDROID mark in its disputed domain name, but the Panel finds such a meager alteration to be insufficient to defeat confusing similarity. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to its <proandroids.com> domain name. The Panel determines that Respondent’s addition of a gTLD to its domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Therefore, the Panel concludes that Respondent’s <proandroids.com> domain name is confusingly similar to Complainant’s ANDROID mark pursuant to 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 claims that it has not authorized or licensed Respondent to use any of its trademarks. The Panel notes that the WHOIS information for the disputed domain name identifies “Privat Person / Boris Gubarev” as the registrant. See Exhibit 4. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 complainant had not authorized the respondent to register a domain name containing its registered mark. Therefore, the Panel determines that Respondent is not commonly known by the <proandroids.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that the domain name resolves to a website that has been monetized with click-through ads. See Exhibit 10. The Panel notes that Respondent’s website also provides applications and game downloads on a Russian language website. Id. Prior panels have found that a respondent’s competing use of a disputed domain name is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). Accordingly, the Panel holds that Respondent’s use of the <proandroids.com> domain name to provide competing applications and game downloads is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant alleges that by using a logo that is nearly identical to Complainant’s ANDROID logo, Respondent attempts to pass itself off as Complainant. The Panel notes that Complainant’s ANDROID logo is prominently displayed at the website resolving from Respondent’s <proandroids.com> domain name and that Respondent’s website provides applications and downloads similar to those provided by Complainant. See Exhibit 10. The Panel finds that Respondent is attempting to pass itself off as Complainant, and finds that Respondent is not using the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).
Complainant asserts that Respondent’s operation of a website offering application and game downloads in competition with Complainant indicates that Respondent has registered and is using the domain name in bad faith to disrupt Complainant’s business. See Exhibit 10. Complainant further asserts that Respondent’s website features click-through advertisements for “UC Browser,” a web browser that competes with Complainant’s own “CHROME” web browser. Id. Previous panels have concluded that a respondent’s use of a domain name to promote a respondent’s own competing business endeavor, along with hyperlinks that promote a complainant’s competitors, is evidence of Policy ¶ 4(b)(iii) bad faith commercial disruption. See 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); see also 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).”). Therefore, the Panel concludes that Respondent’s use of the <proandroids.com> domain name disrupts Complainant’s legitimate business, evidencing bad faith use and registration pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s use of the domain name to generate revenue using pay-per-click advertising likewise constitutes bad faith use and registration because of the likelihood that Internet users will mistakenly believe that Complainant associates itself with the competing products. Complainant contends that the domain name resolves to a website that has been monetized with click-through ads, including an advertisement for “UC Browser,” a web browser that competes with Complainant’s “Chrome” web browser. See Exhibit 10. The Panel finds that Respondent’s use of the <proandroids.com> domain name to generate click-through fees through competing advertisements constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant argues that the fame and unique qualities of the ANDROID mark make it extremely unlikely that Respondent created the domain name independently. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <proandroids.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 2, 2013
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