Google Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1309001519865
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 <pley-gogle.com>, registered with Internet.bs Corp.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2013; the National Arbitration Forum received payment on September 18, 2013.
On September 18, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <pley-gogle.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 September 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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@pley-gogle.com. Also on September 19, 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 October 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has rights in the GOOGLE mark, used in connection with Internet search services and mobile device technology. Complainant owns registrations for the GOOGLE mark with numerous trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,806,075 registered January 20, 2004) and the Panamanian trademark authority (e.g., Reg. No. 142,241 registered May 5, 2005).
One of the services Complainant offers is the Google Play store, an online retail store that allows users to browse, purchase, and access music, books, magazines, movies, TV shows, apps and games from the web or any Android device. Complainant’s March 6, 2012 launch of its Google Play store garnered significant media attention, including coverage in numerous media publications such as USA Today, CNET, TIME Magazine, BloombergBusinessweek, and the New York Times. Complainant’s Google Play store currently offers over 700,000 separate applications for download. As of July 2013, over 50 billion applications had been downloaded from the Google Play store.
Respondent’s
<pley-gogle.com> domain name is confusingly similar to Complainant’s
GOOGLE mark. The disputed domain name incorporates Complainant’s GOOGLE mark
while deleting the letter “o” from the word
“Google,” and adding a misspelling of the word “play.”
Respondent does not have any rights or legitimate interests in the <pley-gogle.com> domain name. Complainant has not authorized Respondent to use its GOOGLE mark in any way. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent is not making an active use of the disputed domain name, and the domain name’s website links to other websites that download malware onto an Internet user’s computer or other device.
Respondent registered and is using the <pley-gogle.com> domain name in bad faith. Respondent is not making an active use of the disputed domain name. The disputed domain name resolves to a corrupted website that contains viruses or malware. Respondent had knowledge of Complainant’s GOOGLE mark prior to registering the <pley-gogle.com> domain name because of the fame and unique qualities of Complainant’s GOOGLE mark.
Respondent registered the <pley-gogle.com> domain name on June 2, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for GOOGLE as well as a Panamanian registration and other registrations worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use the GOOGLE mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in GOOGLE.
Respondent uses the <pley-gogle.com> domain name to ultimately address a corrupt website that contains or links to viruses or malware and downloads malware onto an Internet user’s computer or other device.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the GOOGLE mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i), as does Complainant’s Panamanian and other registrations of GOOGLE worldwide. 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).
The <pley-gogle.com> domain name incorporates Complainant’s GOOGLE mark while deleting the letter “o” from the word “Google,” prefixing a misspelling of the generic word “play” plus a hyphen to the mark, and appending the top level domain name, “.com,” thereto. Deleting a single letter from Complainant trademark does not sufficiently distinguish the at-issue domain name from the trademark. Nor does adding a generic word differentiate the domain name from Complainant’s trademark. In fact, in the instant case using the term “pley,” a misspelling of “play,” increases the similarity between the domain name and Complainant’s trademark since “play” suggest Complainant’s Google Play business. The added hyphen and top level domain name are immaterial to the Panel’s analysis under Policy 4(a)(i). Therefore, the Panel finds that Respondent’s <pley-gogle.com> domain name is confusingly similar to Complainant’s GOOGLE mark under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also 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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Fundacion Private Whois” as the at-issue domain name’s registrant and the record before the Panel contains no evidence that suggests Respondent is otherwise known by the domain name. The Panel thus concludes that Respondent is not commonly known by the <pley-gogle.com> name for the purposes of 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent does not actively use the domain name, however the website addressed by the domain name links to URLs that download malware. Specifically, the domain name links to malware targeting users of Complainant’s ANDROID operating system at <http://pley-gogle.com/update/android_4.2.4.apk> and <http://pleygogle.com/android_4.2.4.apk>. These URLs, which are designed to present application package (“APK”) files which are used to distribute and install application software onto the ANDROID operating system, but instead cause users to download malicious software. By using the domain name to link to nefarious web objects in this manner Respondent is making neither a bona fide offering of goods or services , nor a legitimate noncommercial or fair use of the domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Google Inc. v. Fundacion Private Whois / Domain Administrator, FA 1495039 (Nat. Arb. Forum May 30, 2013) (finding that “[r]espondent’s use of the disputed domain name to host malware . . . 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)”).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, the <pley-gogle.com> domain name links to URLs that ultimately supports malware targeting users of Complainant’s ANDROID operating system. Using a confusingly similar domain name to distribute malware constitutes bad faith under Policy ¶ 4(b)(iv). See Google Inc. v. Fundacion Private Whois / Domain Administrator, FA 1495039 (Nat. Arb. Forum May 30, 2013) (finding that “[r]espondent’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)”).
Furthermore, Respondent undoubtedly had knowledge of Complainant’s GOOGLE mark prior to registering the <pley-gogle.com> domain name. Respondent’s actual knowledge of Complainant’s GOOGLE mark is inferred from the notoriety of the GOOGLE mark, the use of a misspelling of GOOGLE in the domain name, the fact that the domain name’s incorporation of the term “pley” suggests Complainant’s well publicized and immensely popular digital distribution platform Google Play, and from Respondent’s scheme to exploit the Complainant’s mark for the criminal purpose of distributing malware to those interested in developing on Complainant’s Android operating system. Respondent’s prior knowledge of Complainant and Complainant’s rights in the GOOGLE mark shows that Respondent registered the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); 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 <pley-gogle.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 17, 2013
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