national arbitration forum

 

DECISION

 

Google Inc. v. Domain Admin / PrivacyProtect.org

Claim Number: FA1309001521470

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA.  Respondent is Domain Admin / PrivacyProtect.org (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <androidik.com>, registered with LLC "Registrar of domain names REG.RU".

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2013; the National Arbitration Forum received payment on September 26, 2013. The Complaint was submitted in both Russian and English. 

 

On September 27, 2013, LLC "Registrar of domain names REG.RU" confirmed by e-mail to the National Arbitration Forum that the <androidik.com> domain name is registered with LLC "Registrar of domain names REG.RU" and that Respondent is the current registrant of the name.  LLC "Registrar of domain names REG.RU" has verified that Respondent is bound by the LLC "Registrar of domain names REG.RU" 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 October 7, 2013, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of October 28, 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@androidik.com.  Also on October 7, 2013, the Russian language 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 30, 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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian-language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <androidik.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ANDROID 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.

 

FINDINGS

Complainant has offered a software platform and operating system under the ANDROID mark since 2007 and its ANDROID system is the world’s most popular mobile platform, powering hundreds of millions of phones, tablets, and other devices.  Third-party developers create applications for the ANDROID platform that are available for users to download and purchase from Complainant.  Complainant has registered the ANDROID mark around the world, including registration with the Australian federal trademark authority (“IP Australia”) (e.g., Reg. No. 1,208,628 registered January 15, 2009).  Respondent’s <androidik.com> domain name is confusingly similar to Complainant’s ANDROID mark. The disputed domain name merely adds the non-distinctive random letter combination “ik” after the mark.

 

Complainant has not authorized or licensed Respondent to use any of its trademarks.  Respondent’s use of the disputed domain name to divert Internet users to a website where services that compete with those offered by Complainant are advertised is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.  The domain resolves to a Russian-language website offering online games for download and advertising games, web browsers, services and mobile devices, including mobile phones and tablet computers. Some of the advertised devices, such as the Samsung Galaxy Core, run on Complainant’s ANDROID operating system.  Respondent’s website features numerous click-through ads for the advertised games and products, as well as a click-through ad for “UC Browser,” a mobile browser.  Respondent profits when users who encounter the website click on these advertisements.   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 <androidik.com> domain name in bad faith to disrupt Complainant’s business.  Moreover, Respondent’s website features click-through advertisements for “UC Browser,” a web browser that competes with Complainant’s own “Google Chrome” web browser.  Respondent’s current use of the disputed domain name to generate revenue using pay-per-click advertising demonstrates Respondent’s intent to attract Internet users to Registrant’s web site for commercial gain by creating a likelihood of confusion with Complainant’s ANDROID mark.  Given the international prominence and growing omnipresence of the ANDROID platform, as well as Respondent’s own activities under the disputed domain name, Respondent is undoubtedly familiar with the ANDROID mark.  Respondent registered the <androidik.com> domain name on September 25, 2010.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant has offered a software platform and operating system under the ANDROID mark since 2007 and asserts that its ANDROID system is the world’s most popular mobile platform, powering hundreds of millions of phones, tablets, and other devices. Complainant registered the ANDROID mark around the world, including registration with IP Australia (e.g., Reg. No. 1,208,628 registered January 15, 2009).  Registration with a national trademark authority confers rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Accordingly, the Panel hols that Complainant has rights in the ANDROID mark for the purposes of Policy ¶ 4(a)(i).

 

Respondent’s <androidik.com> domain name is confusingly similar to Complainant’s ANDROID mark.  The disputed domain name merely adds the non-distinctive random letter combination “ik” after the mark. The domain also affixes the generic top-level domain “.com.” In light of the relative insignificance of these alterations, Respondent’s <androidik.com> domain name is confusingly similar to Complainant’s ANDROID mark within the meaning of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also 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”).

The Panel finds that Policy ¶ 4(a)(i) has been established.

 

Rights 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 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.”).

 

 The Panel notes that Complainant asserts that it has not authorized or licensed Respondent to use any of its trademarks and further notes that the WHOIS information identifies Respondent as “Domain Admin / PrivacyProtect.org,” which provides no evidence to support a claim that Respondent is in fact commonly known by the disputed domain name. In light of the foregoing and the remainder of evidence in the record, the Panel holds that Respondent is not commonly known by the <androidik.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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 uses the disputed domain name to divert Internet users to a website where services that compete with those offered by Complainant are advertised and that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Specifically, the domain resolves to a Russian-language website offering online games for download and advertising games, web browsers, services and mobile devices, including mobile phones and tablet computers. Respondent’s website features numerous click-through ads for the advertised games and products, as well as a click-through ad for “UC Browser,” a mobile browser that competes with Complainant’s own “Google Chrome” browser. Respondent profits when users who encounter the website click on these advertisements.  The panel in H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) found that because the respondent’s disputed domain names resolved to a website featuring a series of advertising links to various third-parties, many of whom offered products and services in direct competition with those offered under the complainant’s mark, the respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Similarly, this Panel finds that Respondent’s use of the <androidik.com> domain name does not coincide with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established.

 

Registration and Use in Bad Faith

Respondent has registered and used the <androidik.com> domain name in bad faith to disrupt Complainant’s business. Respondent’s website purports to offer for sale, among other things, mobile phones and tablet computers that run on Complainant’s ANDROID operating system, including the Samsung Galaxy Core. Moreover, Respondent’s website features click-through advertisements for “UC Browser,” a web browser that competes with Complainant’s own “Google Chrome” web browser.  Accordingly, the Panel holds that Respondent registered and uses the <androidik.com> domain name in bad faith under Policy ¶ 4(b)(iii). 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).  Further, Respondent’s current use of the disputed domain name to generate revenue using pay-per-click advertising demonstrates Respondent’s intent to attract Internet users to Registrant’s website for commercial gain by creating a likelihood of confusion with Complainant’s ANDROID mark. The panel in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) held that a respondent engages in bad faith registration and use by using a domain name that is confusingly similar to the complainant’s mark to offer links to third-party websites that offer services similar to those offered by the complainant.  Accordingly, the Panel holds that Respondent registered and uses the <androidik.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) based on Respondent’s registration of a confusingly similar domain name and display of monetized links on the resolving website.

 

Given the international prominence and growing omnipresence of the ANDROID platform, as well as Respondent’s own activities under the disputed domain name, Respondent is undoubtedly familiar with the ANDROID mark.  Accordingly, the Panel holds that Respondent did in fact have actual knowledge of Complainant and its rights in the ANDROID mark upon Respondent’s registration of the <androidik.com> domain name, and finds that Respondent registered the domain in bad faith pursuant to 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).

 

The Panel finds that Policy ¶ 4(a)(iii) has been established.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <androidik.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  November 4, 2013

 

 

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