Google LLC v. Hyipp Inversiones Webmaster / Hyipp Inversiones Webmaster, S.A.
Claim Number: FA1806001791842
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Hyipp Inversiones Webmaster / Hyipp Inversiones Webmaster, S.A. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <playstoredownload.us>, registered with Name.com, Inc.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2018; the Forum received payment on June 15, 2018.
On June 15, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <playstoredownload.us> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2018 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@playstoredownload.us. Also on June 18, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the 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
1. This Complaint is based on the following factual grounds.
A. THE GOOGLE PLAY MARK
2. Google is a Delaware limited liability company located in Mountain View, California, with offices throughout the world. The GOOGLE name and company were created in 1997 by Stanford Ph.D. candidates Larry Page and Sergey Brin. Since that time, the Google search engine has become one of the largest, most highly recognized, and widely used Internet search services in the world. Google’s primary website is located at www.google.com, but Google owns and operates websites at over 180 GOOGLE- formative domain names, including <play.google.com/store>. Google offers a wide range of Internet- related products and services, including online entertainment and digital content distribution services. As discussed below, Google owns and uses the GOOGLE PLAY mark and an associated logo in connection with those content distribution services. Moreover, in relevant contexts, Google uses and consumers recognize the “Play Store” wording as being a short-form reference to Google’s “Google Play Store,” which is the online store associated with Google’s GOOGLE PLAY products and services.
3. On March 6, 2012, Google began using the GOOGLE PLAY word mark and an associated design mark (collectively “the GOOGLE PLAY Marks”) in connection with an online store that enables users to browse, purchase and download a wide range of digital content, including music, books, magazines, movies, TV shows, mobile applications, and games (Google’s digital content online store hereinafter referred to as “the Google Play Store”).
4. From its inception, the Google Play Store has garnered significant media attention and coverage, and has attracted millions of users. According to some estimates, as of December 2017, the Google Play Store hosted over three million apps in its catalog. Additionally, as of May 2016, over 65 billion applications had been downloaded from the Google Play Store catalog. Content from the Google PlayStore is available for download by people in a broad range of jurisdictions across the world, including Panama and the United States. There are more than 40 million songs, thousands of new release movies and TV shows, millions of book titles, and thousands of news sources available on the Google Play Store. Authorized Google Play Store software comes pre-installed on mobile devices that are running Google’s Android operating system and that support the GOOGLE PLAY software. Authorized software also may be downloaded on certain Google Chromebook devices.
5. In connection with its Google Play Store product and service, Google often uses the wording “Play Store” as a short-form reference to Google’s Google Play Store. For example, where the Google Play Store application has been installed on a user’s computing device, the icon that appears on the device home screen shows the Google Play Store logo in combination with the wording “Play Store.” Additionally, when Internet users conduct Internet searches on “Google Play” the returned search results often include the wording “Play Store” by itself, again as a short-form reference to Google’s Google Play Store product and services:
6. Moreover, at present, an Internet News search on “Play Store” revealed over 21 million hits. A review of these hits show that every result on at least the first five pages was directly related to Google’s Google Play Store, indicating that news and media outlets commonly use and understand “Play Store” to refer to Google’s Google Play Store product and service. As is clear from the foregoing, in relevant contexts, consumers recognize the “Play Store” wording as a short-form reference to the store aspect of Google’s GOOGLE PLAY products and service, namely, Google’s Google Play Store.
7. Since its inception, Google has continuously used the GOOGLE PLAY Marks in connection with offering and promoting its online retail store for purchasing and downloading digital content. Google owns applications to register the GOOGLE PLAY marks (Serial No. 85/560,994) and (Serial No. 85/563,165) in the U.S. Patent and Trademark Office. Those applications have been approved for publication, with filing dates of March 5, 2012 and March 7, 2012, respectively. Google also owns registrations and applications for registration for the GOOGLE PLAY marks in many other countries, which have the same effective filing dates as their United States counterparts.
B. RESPONDENT’S USE OF THE DOMAIN NAME
8. As shown in the Whois record, the registrant of the Domain Name is Hyipp Inversiones Webmaster / Hyipp Inversiones Webmaster, S.A. According to the Whois record, the Domain Name was registered on July 20, 2014 and Respondent acquired the Domain Name on or about January 28, 2016, each date being well after Google began offering its Google Play Store product and service, acquired enforceable rights in the GOOGLE PLAY Marks and applied for registration of the same, and began using the Play Store wording as a short-form reference to its Google Play Store services.
9.
The Domain Name resolves
to a website that purports
to provide information and software updates
for Google’s Google Play Store product
and services. The website prominently displays
PLAY STORE DOWNLOAD
in a brand like manner at the top of the page. Moreover,
throughout its website, Respondent makes liberal
brand use of various marks owned by and wordings used by Google,
including: the Google
Play Store icon; the GOOGLE
mark and logo; a formative of the Android
robot icon; and the “Play Store” wording (often
in close proximity to the Google
Play Store icon). The foregoing makes clear
that Respondent is using the Domain Name and resolving website in a calculated attempt to mimic the
look and feel of a Google owned website in
an effort to give Internet users
the false impression that they have reached a website operated, sponsored, or endorsed by, or otherwise affiliated with, Google.
10. Respondent’s website encourages users to download software that, upon information and belief, contains malware. The software offered on Respondent’s site is suspicious for several reasons. First, legitimate Google Play Store software either is pre-installed on supporting devices or downloaded through authorized channels and is updated automatically. Respondent, however, is not affiliated with Google and Google has not authorized Respondent to distribute Complainant’s software. Furthermore, Respondent’s website directs users to perform installation steps that are not necessary to install legitimate Google software. Specifically, Respondent directs Internet users to disable or circumvent security settings on their computing devices before downloading the software made available by Respondent on its website.
11. Finally, Respondent’s website prominently features advertising that links Internet users to the products and services of third parties. Respondent presumably receives pay-per-click revenue from these advertisements.
I. LEGAL GROUNDS
This Complaint is based on the following legal grounds.
A. LIKELIHOOD OF CONFUSION – RULE 3(C)(IX)(1); POLICY ¶4(A)(I)
12. Google has used the GOOGLE PLAY Marks since well before the July 20, 2014 creation date of the Domain Name and January 28, 2016 date upon or about which Respondent apparently acquired the Domain Name. Indeed, Google owns registrations and applications for the GOOGLE PLAY Marks in jurisdictions around the world that have effective filings dates that well precede the registration date of the Domain Name. These filings remain valid and in force. In light of these filings and Google’s substantial and exclusive use of the GOOGLE PLAY Marks and associated icons, Google owns strong, protectable rights in its marks that predate the registration date of the Domain Name. See Google LLC v. sohil memon, FA1779688 (Forum April 17, 2018) (“Complainant’s ownership of USPTO and SAIC trademark registration for the . . . GOOGLE PLAY trademark evidences its rights in such mark for the purposes of Policy ¶4(a)(i)”); Google Inc. v. Domain Admin / PrivacyProtect.org, FA1539646 (Forum March 10, 2014) (“Thus, the Panel finds that Complainant has common law rights in the GOOGLE PLAY mark, showing rights in the mark under Policy ¶4(a)(i).”). In addition, Google has used the “Play Store” wording by itself as a short-form reference to Google’s Google Play Store service since well prior to Respondent’s registration and/or acquisition of the Domain Name, as discussed. Moreover, in relevant contexts - such as here where the website resolving from the Domain Name is clearly targeted at Google’s Google Play Store product and service – consumers recognize the “Play Store” wording as a short-form reference to Google’s “Google Play Store,” which is the online store associated with Google’s GOOGLE PLAY products and services.
13. The Domain Name is confusingly similar to the literal elements of Google’s GOOGLE PLAY Marks. In registering the Domain Name, Respondent has merely coopted the PLAY element of Google’s marks and added the descriptive, non-distinctive terms “store” and “download.” Given the fame of Google’s GOOGLE PLAY Marks, the addition of the non-distinctive “StoreDownload” wording does nothing to distinguish the Domain Name from Google’s marks. This is particularly true where, as here, the additional terms are directly related to, and indeed were specifically chosen because they are a clear reference to, Google’s Google Play Store product and service. For example, as discussed, “Play Store” is commonly used as a short-form reference to Google’s Google Play Store offering. Thus, Respondent’s use of that identical wording in the Domain Name - a domain name that is used in connection with a website devoted to misleading Internet users into believing that they have reached a Google-run site and are downloading legitimate Google Play Store-related software – is a deliberate attempt by Respondent to create a confusing similarity between the Domain Name and Complainant and its GOOGLE PLAY Marks. Further, Respondent’s addition of “download” is of no distinguishing value because the term is directly related to Google’s Google Play Store product and service, which may be downloaded to a computing device. The insufficiency of non-distinctive terms to distinguish a domain name from a mark is particularly apparent where, as here, the added terms “store” and “download” are directly related to Google’s product and service. See, e.g., Google Inc. v. Domain Admin / Whois Privacy Corp., FA1726692 (Forum May 16, 2017) (finding <gmail-support.org> confusingly similar to Google’s GMAIL mark because “Panels have determined that domain names are confusingly similar to a mark where the domain names consisted of a mark or marks, [and] the addition of descriptive terms of Complainant’s business.”); see also Ashley Furniture Industries, Inc. v. Webstarts, FA1354998 (Forum Dec. 3, 2010) (“The addition of such descriptive terms to a registered mark in forming a domain name [<ashleyfurniturerepair.com>] does not result in a unique domain name. This is especially the case where the descriptive terms are closely related to [c]omplainant’s [furniture] business.”).
14. Under circumstances closely similar to the present case, a Panel had no difficulty finding confusing similarity. In Google Inc. v. Domain Admin / PrivacyProtect.org, the respondent was using the <download-playmarket.net> domain name in connection with a website that, like the present case, purported to offer GOOGLE PLAY-related software for download. FA1539646 (Forum March 10, 2014). In its decision, the Panel found that respondent’s mere omission of “GOOGLE” from the domain name did not prevent a finding of confusing similarity. Id. Rather, the Panel held that the domain name was confusingly similar to Google’s GOOGLE PLAY mark because the domain name “merely add[ed] the descriptive terms “download” and “market” before and after the PLAY portion of Complainant’s GOOGLE PLAY mark.” The foregoing case is indistinguishable from the present situation and the identical reasoning applies, particularly because “market” (from the former domain name) and “store” in the present case are synonyms. Here, as noted, Respondent has merely added the descriptive terms “store” and “download” – terms that, as discussed, are directly related to Google’s GOOGLE PLAY Marks and Google Play Store product and service – to the PLAY portion of Google’s well-known GOOGLE PLAY Marks. And Respondent has deliberately chosen this confusingly similar Domain Name for use in connection with a website aimed squarely at Google’s Google Play Store offering.
15. Finally, Respondent’s addition of the generic country code top-level domain (“ccTLD”) “.US,” in the Domain Name is of no help. Panels have consistently held that ccTLD’s are irrelevant within an analysis of confusing similarity. See, e.g., Laboratoires M&L v. Nitish Ghuse, FA1782090 (Forum May 18, 2018) (“The addition of a ccTLD to a mark is insufficient to distinguish the resultant domain name from the mark per Policy ¶4(a)(i).”).
16. Given the foregoing, the Domain Name is confusingly similar to Google’s GOOGLE PLAY Marks.
B. NO RIGHTS OR LEGITIMATE INTERESTS – RULE 3(C)(IX)(2); POLICY ¶4(A)(II).
17. Complainant has made widespread and prominent use of the GOOGLE PLAY Marks, which are highly distinctive and famous. Respondent incorporated the PLAY element from the GOOGLE PLAY Marks in the Domain Name in combination with descriptive terms that are directly related to Google’s Google Play Store product and service, makes brand use of several marks and wordings related to Google and its Google Play Store products and services on Respondent’s website, and uses the Domain Name to improperly distribute unauthorized software (as discussed). Given that context, there is no question that Respondent deliberately chose the Domain Name to create an association with Google and is attempting to trade off of the goodwill embodied in Complainant’s GOOGLE PLAY Marks. This is evidence that Respondent does not have rights or legitimate interests in the Domain Name. See Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000) (finding that respondent lacked rights and legitimate interests in the domain name because respondent was not authorized to use complainant’s TELSTRA marks, and because TELSTRA is an invented term, it is not a mark that another would legitimately choose unless seeking to create an impression of an association with complainant).
18. There is no evidence that Respondent has any rights or legitimate interests in the Domain Name. Google has not authorized Respondent to register or use the Domain Name. In addition, neither Respondent nor the services offered by Respondent associated with the Domain Name (as discussed above) are affiliated with, associated with, or otherwise endorsed by Google. Unlicensed, unauthorized use of a domain that incorporates a complainant’s trademark is strong evidence that a respondent has no rights or legitimate interest in the domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA1076561 (Forum Oct. 26, 2007); Fair Isaac Corp. v. Michele, FA1486147 (Forum Mar. 30, 2013) (“Respondent could not have developed any rights in the FICO [m]ark, unless Complainant licensed the FICO mark to Respondent or otherwise allowed Respondent to use it.”).
19. On information and belief, Respondent is not commonly known by the Domain Name or any name containing the GOOGLE PLAY Marks or Play Store. The Whois record in connection with the Domain Name makes no mention of the Domain Name or the GOOGLE PLAY Marks. A registrant may be found to lack any rights or legitimate interest in a domain name where there is no indication in the record that it is known by that name. See Google Inc. v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS, FA1519295 (Forum Oct. 29, 2013) (some of the “best evidence to determine if a Respondent has rights or interests by being commonly known by the disputed domain name is the WHOIS record”); see also Popular Enterprises, LLC v. Sung-a Jang, FA0811921 (Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”); Braun Corp. v. Loney, FA0699652 (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).
20. Respondent also is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under Policy ¶4(a)(ii). As discussed above, Respondent is using the Domain Name in connection with a website that purports to offer software updates related to Google’s Google Play Store. This is in direct competition to Google’s own Google Play Store product and services, as discussed. Respondent’s use of the confusingly similar Domain Name to compete directly with Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Google Inc. v. Domain Admin / PrivacyProtect.org, FA1539646 (Forum March 10, 2014) (“Respondent is using the <download-playmarket.net> domain name to operate a website that purports to offer an upgraded version of “Google Play Market” for download, in direct competition with Complainant’s GOOGLE PLAY store. Prior panels have held that a respondent’s use of a disputed domain name to provide competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
21. As discussed, Respondent is using the confusingly similar Domain Name in connection with a website designed to give Internet users the false impression that they have reached a Google-affiliated website. Respondent is engaging in this deception in order to dupe Internet users into installing on their devices software that they mistakenly believe is from Complainant - software that upon information and belief is malware. Under similar circumstances, Panels have had no trouble finding that the respondent lacked rights or legitimate interests in the domain name. See, e.g., Google LLC v. sohil memon, FA1779688 (Forum April 17, 2018) (“Also, Complainant argues . . . that Respondent is intent on visitors downloading malware via links from the <googleplayservicesapk.com> website. Respondent’s use of the domain name in this manner does not constitute a bona fide offering, noncommercial or fair use per Policies ¶4(c)(i) & (iii).”); Tumblr, Inc. v. Privacy Protect.org/jianchunyuan, D2013-0243 (WIPO Mar. 15, 2013) (“The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as the website to which the disputed domain name resolves redirects to…a common browser hijacking virus”); see also Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, where respondent was trying to pass themselves off as an affiliate of Complainant.); Chevron Intellectual Property LLC v. Richard Bailey / Jacobs, FA1588430 (Forum Dec. 9, 2014) (finding no bona fide offering of goods or services where the respondent’s use of the disputed domain name was in furtherance of fraudulent activity under the misleading guise of the domain name and associated email addresses).”
22. As noted, Respondent uses the Domain Name to feature pay-per-click advertising that is unrelated to Complainant and from which Respondent presumably reaps pecuniary rewards. Respondent’s coopting of the GOOGLE PLAY Marks in the Domain Name for financial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under Policy 4(a)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1622862 (Forum Aug. 10, 2015) (finding that the respondent owned no rights or legitimate interests in the <youtube10.com> domain name where the domain resolved to a website that featured advertising links to third parties unrelated to Google); see also Google Inc. v. James Lucas / FireStudio / jameschee / FIRESTUDIO / SEONG YONG, FA1605757 (Forum Apr. 7, 2015) (finding that the respondent lacked rights or legitimate interests in the <youtubeonfire.com> domain name where the respondent used the domain in connection with a website that featured pay-per-click advertising); Victoria’s Secret Stores Brand Management, Inc. v. NAIRANAIRA/NAIRANAIRA, FA1430063 (Forum Mar. 30, 2013) (finding that use of the <victoriasecretperfume.org> domain name for the purpose of receiving pay-per-click ad revenue does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
23. Thus, the record demonstrates that Respondent owns no rights or legitimate interests in the Domain Name.
C. BAD FAITH – RULE 3(C)(IX)(3); POLICY ¶4(A)(III)
24. The evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Name opportunistically and in bad faith. Given the extensive use, media coverage and fame of Google’s GOOGLE PLAY Marks, Google’s worldwide trademark filings (including registrations and applications), Respondent’s coopting of the PLAY element from the GOOGLE PLAY Marks for use in the Domain Name in combination with merely descriptive terms that are directly related to Google’s Google Play Store product and service, Respondent’s brand use on its website of several marks and wordings related to Google and its products and services, and Respondent’s use of the Domain Name to improperly distribute unauthorized software (as discussed), it is inconceivable that Respondent registered the Domain Name independently and without actual knowledge of Google’s marks. See Google Inc. v. Domain Admin / PrivacyProtect.org, FA1539646 (Forum March 10, 2014) (“Complainant contends that the fame and unique qualities of the GOOGLE PLAY mark, which were adopted by Complainant prior to the registration of the <download-playmarket.net> domain name, make it extremely unlikely that Respondent created the domain name independently. The Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii).”); see Google, Inc. v. Rusev, FA0466022 (Forum June 3, 2005) (concluding that respondent registered the disputed domain with actual knowledge of complainant’s rights due to the connection between respondent’s website and complainant’s business, which was evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii)); see also The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin, FA0112627 (Forum July 1, 2002) (“Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, [r]espondent is thought to have been on notice as to the existence of Complainant’s mark at the time [r]espondent registered the infringing <jjilll.com> domain name. Thus, [r]espondent’s registration despite this notice is evidence of bad faith registration.”).
25. Given Respondent’s registration of the Domain Name that, without a doubt, is targeted to Internet users seeking to engage with Google, it is impossible to conceive of any potential legitimate use of the Domain Name. As such, the Domain Name is being used in bad faith. See Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003) (“Respondent has appropriated a trademark having a strong reputation and widely known. The Panel finds it implausible that [r]espondent was unaware of [c]omplainant's trademark . . . . [r]espondent has provided no evidence or suggestion of a possible legitimate use . . . . Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by [r]espondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the [c]omplainant’s rights under trademark law.”).
26.As discussed, Respondent is using the confusingly similar Domain Name in connection with a website designed to give Internet users the false impression that they have reached a Google-affiliated website. Respondent’s Domain Name and website are calculated to deceive Internet users who are seeking to obtain or engage with Complainant’s Google Play Store products and services and induce them to install Respondent’s products on their devices, and to divert traffic from Complainant’s websites to Respondent’s website for Respondent’s own financial gain. Such activities constitute clear evidence of Respondent’s bad faith use and registration of the Domain Name. See Google LLC v. sohil memon, FA1779688 (Forum April 17, 2018) (“Respondent attempts to impersonate Complainant so that it may trick visitors to the <googleplayservicesapk.com> website into downloading malware. Passing itself off as Complainant and attempting to download malware demonstrates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶4(b)(iv).”); Google Inc. v. Domain Admin / PrivacyProtect.org, FA1539646 (Forum March 10, 2014) (“Respondent’s operation of a website offering a purportedly upgraded GOOGLE PLAY store download in direct competition with Complainant’s GOOGLE PLAY store—and featuring the GOOGLE PLAY logo—indicates that Respondent has registered and is using the domain name in bad faith to disrupt Complainant’s business.”); Coldwell Banker Real Estate LLC v. piperleffler, FA1529565 (Forum Dec. 27, 2013) (finding bad faith use and registration where the respondent was using the contested domain name in order to pose as complainant in a fraudulent scheme); Victoria’s Secret Stores Brand Management, Inc. v. Lewis, FA1337417 (Forum Sept. 2, 2010) (finding that the similarity of respondent’s domain name and complainant’s mark evidenced an intention by respondent to capitalize on complainant’s fame and to profit by attracting Internet users to respondent’s website, revealing bad faith registration and use of the disputed domain name under Policy ¶4(b)(iv)).
27. Additionally, Respondent’s use of the Domain Name to present Internet users with pay-per-click advertising for third parties unrelated to Complainant through which Respondent presumably reaps financial reward constitutes evidence of bad faith use and registration. See Google Inc. v. James Lucas / FireStudio / jameschee / FIRESTUDIO / SEONG YONG, FA1605757 (Forum Apr. 7, 2015) (“Respondent is likely gaining click-through fees from advertisements . . . . Past panels have found such use to constitute bad faith per Policy ¶4(b)(iv) . . . . This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant to Policy ¶4(b)(iv).”); see also Orbitz Worldwide, LLC v. Domain Admin / Abadaba S.A., FA1561212 (Forum Jul. 9, 2014) (finding bad faith where respondent redirected Internet users to websites displaying advertisements that compete with the complainant’s business); Google Inc. v. IAI, FA1266305 (Forum Jul. 22, 2009) (finding the respondent’s use of Google’s YOUTUBE mark in domain names in order to profit from such use constitutes bad faith use and registration).
28. Where a domain name is “so obviously connected with such a well-known name and product[],” its “very use by someone with no connection with the product suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000).
29. Based on the foregoing, Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Respondent sent an email saying
“Hello,
The domain will expire on 07-18-2018
Do you want I transfer to your customer?
Regards”
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 (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 rights in the GOOGLE PLAY mark through its numerous trademark registrations around the world. Registrations of a mark with a governmental authority is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i) (in this case 162 governmental authorities; an impressive total). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Complainant has sufficiently demonstrated rights in the GOOGLE PLAY mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <playstoredownload.us> domain name is confusingly similar to Complainant’s GOOGLE PLAY mark. Respondent deletes a term within the mark, adds descriptive terms (“store” and “download”), and a ccTLD to the mark. Adding related terms to a domain name incorporating complainant’s mark does not prevent a finding of confusing similarity between a disputed domain name and the mark under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶4(a)(i).); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶4(a)(i)); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Respondent uses the term “PLAY” from Complainant’s mark while adding terms “store,” “download,” and the “.us” ccTLD. The domain name is confusingly similar to the mark, especially in light of the evidence Complainant’s service appears on Android phones as “Play Store” (beneath Complainant’s logo) once the app is installed. Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Respondent has submitted no evidence Respondent has a registered mark for the disputed domain name anywhere in the world (which would satisfy the requirements of Policy ¶4(c)(i)). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶4(c)(i)). Respondent has failed to satisfy Policy ¶4(c)(i).
Complainant claims Respondent has no rights or legitimate interests in the <playstoredownload.us> domain name. Respondent is not authorized or licensed to use Complainant’s GOOGLE PLAY mark. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies “Hyipp Inversiones Webmaster / Hyipp Inversiones Webmaster, S.A.” as the registrant of the domain name. There is no obvious relationship to the disputed domain name. The Panel must conclude Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(iii).
Complainant claims Respondent is not using the <playstoredownload.us> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to pass itself off as Complainant and offer competing download services related to Complainant’s “Google Play Store.” Using a disputed domain name to create a false impression of association with a complainant and offer competing services does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(ii) and (iv). See Nokia Corp. v. Eagle, FA 1125685 (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)); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The disputed domain name resolves to a website which features Complainant’s robot logo. The disputed domain name’s landing webpage also contains links related to Complainant’s business. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(ii) and (iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <playstoredownload.us> domain name in bad faith. Respondent attracts, for commercial gain, users to the disputed domain name where Respondent attempts to pass itself off as Complainant, offering competing services. Using a disputed domain name to commercially benefit from user confusion constitutes bad faith under Policy ¶4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶4(b)(iv)). Respondent’s landing pages features Complainant’s robot logo in connection with software and services related to Complainant’s “Google Play Store.” The disputed domain name’s webpage also contains links/advertisements related to Complainant’s business (e.g. “Play Store v6.2 APK). Respondent attempts to pass itself off as Complainant for commercial gain. This constitutes bad faith registration and use under Policy ¶4(b)(iv).
Complainant claims Respondent attempts to distribute malware to users downloading software located at the <playstoredownload.us> domain name. It is never auspicious when someone tells you to manually turn off your security and antivirus programs. Using a disputed domain name to distribute malicious software constitutes bad faith under Policy ¶4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). Respondent distributes malware, which constitutes bad faith registration and use under to Policy ¶4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant’s GOOGLE PLAY mark. This Panel would tend to agree. Respondent uses Complainant’s logo and clearly references Complainant’s business of selling games on-line. That hardly seems to be coincidental. See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). Respondent was not authorized to use Complainant’s mark in connection with game software downloads. Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith registration and use in violation of Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <playstoredownload.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 13, 2018
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