Google Inc. v. Aleksey Lebedev
Claim Number: FA1309001521471
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Aleksey Lebedev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youandroid.info>, registered with 1&1 Internet AG.
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 September 25, 2013; the National Arbitration Forum received payment on September 26, 2013.
On September 30, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <youandroid.info> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@youandroid.info. Also on September 30, 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 25, 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.
Complainant’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <youandroid.info> domain name on December 5, 2012.
Respondent’s Contentions
Respondent did not submit a response.
1. Respondent’s <youandroid.info> domain name is confusingly similar to Complainant’s ANDROID mark.
2. Respondent does not have any rights or legitimate interests in the <youandroid.info> domain name.
3. Respondent registered or used the <youandroid.info> 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 claims that it uses the ANDROID mark to identify its mobile and personal device operating system platform, as well as to promote its online marketplace for games and applications. Complainant notes that it has registered its ANDROID mark with various national trademark registrars, including but not limited to the UKIPO (Reg. No. 2,530,935 registered April 23, 2010), RFSIP (Reg. No. 375,862 registered on Nocember 12, 2007), and the SAIC (Reg. No. 6,362,220 registered on May 14, 2010). Previous panels have found that Policy ¶ 4(a)(i) is established when there is evidence that a given mark has been approved of by multiple national trademark registrars. See, e.g., Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). The Panel therefore agrees that Complainant has Policy ¶ 4(a)(i) rights in the ANDROID mark.
Complainant argues that Respondent’s <youandroid.info> domain name adds the non-descriptive and non-distinctive term “you” to the ANDROID mark. The Panel first agrees that although the domain name includes the generic top-level domain (“gTLD”) “.info,” such a gTLD is not relevant to this analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well -established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). In the case of Wells Fargo Home Mortgage v. domains Ventures, FA 810215 (Nat. Arb. Forum Nov. 14, 2006), the panel found that the introduction of a common and generic term to a domain name does not clear up confusion when the domain name’s distinctive quality is the trademark of another. The Panel therefore agrees that Respondent’s <youandroid.info> domain name is confusingly similar to the ANDROID 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); 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 argues that Respondent is not known by this domain name. Complainant states that it has not authorized or licensed Respondent’s use of the ANDROID mark in this <youandroid.info> domain name. The Panel notes that the <youandroid.info> domain name’s WHOIS information lists “Aleksey Lebedev” as the registrant of record. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel determined that the WHOIS record an important factor as to Policy ¶ 4(c)(ii) when there is absolutely no other evidence in the record establishing the respondent’s identity. The Panel here thus agrees that Respondent is not known as the <youandroid.info> domain name under Policy ¶ 4(c)(ii).
Complainant attests that Respondent uses the <youandroid.info> domain name to send Internet users to a Russian-language website that advertises itself as an ANDROID shop, and offers various video games in competition with Complainant’s ANDROID business. The Panel notes that the record illustrates the <youandroid.info> domain name is being used to promote various video game downloads in the Russian language. See Compl., at Attached Ex. 10. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), the panel found the use of a confusingly similar domain name to be neither bona fide, nor legitimately noncommercial, when the domain name was used to offer similar goods to those offered under the complainant’s own mark. Therefore the panel finds that Respondent is not known by this <youandroid.info> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent’s use of Complainant’s own logos and trademarks on the <youandroid.info> domain name’s website illustrates Respondent’s intent to pass itself off as Complainant. The Panel notes that Respondent has attempted to make the “ANDROID” masthead of the <youandroid.info> domain name resemble Complainant’s own ANDROID design marks. See Compl., at Attached Ex. 10. The Panel agrees that Respondent’s decision to use Complainant’s own marks and styles in soliciting competing video game downloads through the <youandroid.info> domain name illustrates an attempt to pass off as Complainant, and thus Respondent lacks Policy ¶ 4(a)(ii) rights and legitimate interests in the domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant contends that Respondent’s competing offers of video games through the <youandroid.info> domain name evidence a bad faith attempt to disrupt the games and applications legitimately marketed through Complainant’s ANDROID mark. The Panel again notes that the game downloads through the domain name’s website are similar to the types of games that Complainant sells through its ANDROID mark. See Compl., at Attached Ex. 10. The panel in Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), found that there was an unfair commercial disruption when the respondent appropriated the complainant’s own marks in running a competing enterprise over the Internet. The Panel here agrees that Respondent’s use of the <youandroid.info> domain name evidences a Policy ¶ 4(b)(iii) attempt to disrupt Complainant’s business.
Complainant also avers that Respondent seeks to confuse Internet users into believing they are visiting websites run by, or approved by, Complainant. Complainant argues that Respondent mimics Complainant’s own trademarks throughout the domain name’s website. The Panel again notes the similarity between the designs and offerings on the disputed <youandroid.info> domain name and the goods provided under the ANDROID mark. See Compl. at Attached Exs. 6, 10. The Panel here agrees that Internet users will suffer the likelihood of confusing Complainant as a sponsor, source, or affiliate of the Russian-language video game offerings available on the <youandroid.info> domain name. See, e.g., 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)). As such the Panel finds Policy ¶ 4(b)(iv) bad faith on the part of Respondent.
Complainant believes that it is unlikely that Respondent devised this <youandroid.info> domain name independent of knowledge of Complainant’s ANDROID mark. 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 <youandroid.info> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 5, 2013
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