Google Inc. v. DigitBuying
Claim Number: FA1306001506085
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is DigitBuying (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <android-sale.com>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2013; the National Arbitration Forum received payment on June 24, 2013.
On June 21, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <android-sale.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 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@android-sale.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 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <android-sale.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ANDRIOD mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., has offered a software platform and operating system under the ANDROID mark. Complainant alleges that ANDROID is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices. Complainant is the owner of trademark registrations with the United Kingdom Intellectual Property Office (“UKPTO”) for the ANDROID mark (Reg. No. 2,530,935, registered April 23, 2010). Complainant is also the owner of trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the ANDROID mark (e.g., Reg. No. 10,160,686, registered January 7, 2013).
The domain name is nearly identical and confusingly similar to the ANDROID mark. Moreover, the use of the term “sale” confirms the confusing similarity of the domain name to Complainant’s rights, because the term plainly refers to the ANDROID-powered devices offered for sale by Complainant through its “Google Play” store. Complainant has not authorized or licensed Respondent to use any of its trademarks. The devices advertised by Respondent as “Android Phones” are not legitimate, authorized ANDROID-powered devices, but rather, counterfeit clones of existing products. Furthermore, by using a logo that is very similar to, and in the same custom typeface as, Complainant’s ANDROID logo, Respondent attempts to pass itself off as Complainant. Respondent’s operation of a website offering purported ANDROID devices for sale in competition with Complainant indicates that Respondent has registered and is using the domain name in bad faith to disrupt Complainant’s business. Complainant’s use of the domain name to sell products under the auspices that they are authorized ANDROID-powered devices, when in reality, on information and belief, they are unauthorized counterfeit clones, evidences Respondent’s bad faith intent to confuse Internet users into believing they are doing business with Complainant or an affiliate, when they are in fact mistakenly handing money to Respondent. The fame and unique qualities of the ANDROID mark make it extremely unlikely that Respondent created the domain name independently. Respondent registered the domain name on December 6, 2010.
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 offered a software platform and operating system under the ANDROID mark. Complainant contends that ANDROID is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices. Complainant is the owner of trademark registrations with the UKPTO for the ANDROID mark (Reg. No. 2,530,935, registered April 23, 2010). Complainant also is the owner of trademark registrations with China’s SAIC for the ANDROID mark (e.g., Reg. No. 10,160,686, registered January 7, 2013). Id. Respondent appears to reside in China. Therefore, Complainant has sufficiently established its rights in the ANDROID mark pursuant to Policy ¶ 4(a)(i) through its registration with the UKPTO and China’s SAIC. See DatingDirect.com Ltd. v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (finding that the panel recognizes the distinctive nature of the complainant’s DATINGDIRECT.COM mark through registration with the United Kingdom Patent Office); 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)).
Respondent adds the generic term “sale” to Complainant’s ANDROID mark in its <android-sale.com> domain name. The use of the term “sale” confirms the confusing similarity of the domain name to Complainant’s rights, because the term plainly refers to the ANDROID-powered devices offered for sale by Complainant through its “Google Play” store. Respondent’s inclusion of a generic term does not adequately distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Respondent’s addition of a hyphen does not differentiate Respondent’s domain name 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).”). Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. 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”). Thus, Respondent’s <android-sale.com> domain name is confusingly similar to Complainant’s ANDROID mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 has not authorized or licensed Respondent to use any of its trademarks. Additionally, the WHOIS information for Respondent’s disputed domain name indicates that “DigitBuying” is the registrant. Therefore, according to the evidence in the record, Respondent is not commonly known by its <android-sale.com> domain name under Policy ¶ 4(c)(ii). 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 devices advertised by Respondent as “Android Phones” are not legitimate, authorized ANDROID-powered devices, but rather, counterfeit clones of existing products. Respondent’s <android-sale.com> domain name appears to be used to sell counterfeit models of Complainant’s products. In eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), the panel concluded that the sale of counterfeit products was evidence that respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. Therefore, Respondent’s use of the <android-sale.com> domain name to sell counterfeit ANDROID products 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.
By using a logo that is very similar to, and in the same custom typeface as, Complainant’s ANDROID logo, Respondent attempts to pass itself off as Complainant. The Panel observes that Respondent’s <android-sale.com> domain name resolves to a website featuring Complainant’s logo and selling counterfeit items of Complainant’s products. The Panel holds that Respondent has attempted to pass itself off as Complainant, which is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Respondent’s operation of a website offering purported ANDROID devices for sale 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 <android-sale.com> domain name appears to sell counterfeit models of Complainant’s products. In Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panel held that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use. Accordingly, Respondent’s use of the <android-sale.com> domain name disrupts Complainant’s business, evidencing bad faith use and registration under Policy ¶ 4(b)(iii).
Respondent use of the domain name to sell counterfeited clone products under the auspices that they are authorized ANDROID-powered devices is evidence of Respondent’s bad faith intent to confuse Internet users into believing they are doing business with Complainant or an affiliate, when they are in fact mistakenly handing money to Respondent. Respondent is using the <android-sale.com> domain name to confuse Internet users and divert them to their own business, the Panel finds that Respondent’s use of the domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
The fame and unique qualities of the ANDROID mark make it extremely unlikely that Respondent created the domain name independently. Therefore, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights and thus acted in bad faith under 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).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <android-sale.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 26, 2013
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