Google Inc. v. Serghiy Vasilchenko / Serg Vasilchenko / ahnames
Claim Number: FA1308001516098
Complainant is Google Inc. (“Complainant”), represented by Katie Krajeck of Cooley LLP, California, USA. Respondent is Serghiy Vasilchenko (“Respondent”), Ukraine.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <android4gamers.com>, <android-games-box.com>, <android-one.com>, <android-playing.com>, <captain-android.com>, and <games-for-android.com>, registered with EvoPlus Ltd., and <android-core.com>, registered with EuroDNS S.A.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2013; the National Arbitration Forum received payment on August 22, 2013.
On August 29, 2013, EvoPlus Ltd. confirmed by e-mail to the National Arbitration Forum that the <android4gamers.com>, <android-games-box.com>, <android-one.com>, <android-playing.com>, <captain-android.com>, and <games-for-android.com> domain names are registered with EvoPlus Ltd and that Respondent is the current registrant of the names. On September 3, 2013, EuroDNS S.A. confirmed by e-mail to the National Arbitration Forum that the <android-core.com> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EvoPlus Ltd. and EuroDNS S.A. have verified that Respondent is bound by the registrars’ respective registration agreements 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 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@android4gamers.com, postmaster@android-core.com, postmaster@android-games-box.com, postmaster@android-one.com, postmaster@android-playing.com, postmaster@captain-android.com, postmaster@games-for-android.com. Also on September 16, 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 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
2. Policy ¶ 4(a)(ii)
3. Policy ¶ 4(a)(iii)
Respondent made the following domain name registrations:
<android4gamers.com>, registered February 23, 2012.
<android-core.com>, registered on December 8, 2010.
<android-games-box.com>, registered on February 4, 2012.
<android-one.com>, registered on December 21, 2011.
<android-playing.com>, registered on February 23, 2012.
<captain-android.com>, registered on May 15, 2012.
<games-for-android.com>, registered on October 21, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain names were registered as below: <android4gamers.com> was registered on February 23, 2012; <android-core.com>, registered on December 8, 2010; <android-games-box.com>, registered on February 4, 2012; <android-one.com>, registered on December 21, 2011; <android-playing.com>, registered on February 23, 2012; <captain-android.com>, registered on May 15, 2012; and <games-for-android.com>, registered on October 21, 2011.
Complainant established that it had rights in the mark contained in the disputed domain names.
Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 decides 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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that all of the domain names resolve to websites hosting similar content, that all of the domain names include the same fine-print, all of the domain names appear to have been originally registered with the same registrar, and the only domain name —<captain-android.com>—with a different registrant name contains the name of a privacy service. Complainant adds that the registrant information for each disputed domain (excluding <captain-android.com>, which uses a privacy service) includes the same or very similar contact information. Specifically, Complainant notes that the domains are registered to an individual with the last name “Vasilchenko” and the first name “Serghiv” or “Serg,” and each domain registration lists an address in the Ukraine, an identical phone number, and an identical email address.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant uses the ANDROID mark to market and sell phones, tablets, and other electronic devices. Complainant states that the ANDROID mark is also used to promote software applications for Complainant’s electronic devices. Complainant notes that it has registered the ANDROID mark with various trademark registrars, including but not limited to the UKIPO (Reg. No. 2,530,935 registered on April 23, 2010), and the UIIP (Reg. No. 103,637 (m2007-19065), registered on February 25, 2009). The Panel agrees that these trademark registrations evidence rights sufficient to support a finding under Policy ¶ 4(a)(i), especially when the mark has been registered in Respondent’s listed country of Ukraine. See 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).”).
Complainant argues that domain names are confusingly similar to the ANDROID mark, as outlined in the chart available in the Amended Complaint. Complainant specifically argues that the <android4gamers.com> domain name merely adds “4 gamers” to the mark, <android-core.com> merely adds the term “core,” <android-games-box.com> adds the phrase “games-box,” <android-one.com> adds the term “one,” <android-playing.com> adds the term “playing,” <captain-android.com>, adds the term “captain,” and <games-for-android.com> adds the phrase “games-for.” Complainant argues that all of the terms are either wholly irrelevant or generic, or are used to imply the distinctive goods and services offered under the ANDROID mark—namely, the ability to download applications and web-based games onto ANDROID-oriented devices. The Panel wholly agrees here, as none of the terms added to the ANDROID mark in any of the domain names are inherently or otherwise distinctive, and thus rely on the ANDROID portion of the domain names for their strength. See, e.g., 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). The Panel also agrees that the various hyphens inserted into these domain names are not relevant additions. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Because previous panels, such as the panel in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), have concluded that generic top-level domains (“gTLDs”) such as “.com” are irrelevant, the Panel finds that all of these domain names are confusingly similar to the ANDROID mark pursuant to 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 as these domain names. Complainant claims that it has not authorized or licensed Respondent’s use of its trademarks in any way. The Panel notes that the WHOIS information lists Respondent as “Serghiy Vasilchenko,” “ATTN: Private Registrations / London 1,” and “Serg Vasilchenko.” The panel in Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), held that when there is no response, the WHOIS record ordinarily provides the only basis for determining the respondent’s identity. As such, the Panel agrees that Respondent is not known by the <android4gamers.com>, <android-core.com>, <android-games-box.com>, <android-one.com>, <android-playing.com>, <captain-android.com>, and <games-for-android.com> domain names under Policy ¶ 4(c)(ii).
Complainant next claims that Respondent uses all of the domain names to host websites wherein Internet users can download Russian-language video games. Complainant argues that the offerings on these domain names are competing with Complainant’s business under the ANDROID mark. The Panel notes that all of the domain names resolve to websites that promote, in part, downloadable video games. See Complaint, at Attached Ex. 10. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), the panel found that there was nothing bona fide or legitimate about the use of a confusingly similar domain name for the purpose of promoting products that were similar to those offered under the mark. The Panel here likewise finds that the use of the domain names to promote various competing video game offerings is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant also argues that Respondent is able to gain click-through revenues from its various web advertisements from Internet users who believed that they were clicking on hyperlinks associated with Complainant. The Panel notes that <captain-android.com> domain name resolves to a website that includes hyperlink advertisements to third-party sponsors. See Complaint, at Attached Ex. 10. Previous panels have widely agreed that the use of a confusingly similar domain name for purposes of promoting click-through, sponsored, advertisements is not a bona fide use of the domain name. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel thus concludes that in specific regard to the presence of sponsored advertisements, there is no acceptable use of the <captain-android.com> domain name pursuant to Policy ¶¶ 4(c)(i), (iii).
Complainant argues that Respondent seeks to pass itself off as Complainant by using Complainant’s own marks. The Panel notes that the ANDROID mark is featured in a variety of ways on each of the disputed domain names’ landing pages. See Complaint, at Attached Ex. 10. The Panel believes that Respondent intended these websites to appear similar to Complainant’s websites, so as to pass itself off as Complainant, the Panel agrees that Respondent lacks any sort of right or legitimate interest in these domain names under Policy ¶ 4(a)(ii). 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 claims that Respondent is using these domain names to instigate a scheme that disrupts Complainant’s business. The Panel notes that at all of the domain names except the <captain-android.com> domain name resolve to landing pages that include many promotions for downloadable games. See Complaint, at Attached Ex. 10. The Panel agrees that as Complainant promotes games and other applications through its ANDROID online store, the presence of these competing game downloads on the confusingly similar <android4gamers.com>, <android-core.com>, <android-games-box.com>, <android-one.com>, <android-playing.com>, and <games-for-android.com> domain names is evidence of Policy ¶ 4(b)(iii) bad faith. 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).
Complainant next argues that Respondent creates a likelihood that Internet users will confuse Complainant as the source or origin of the video game downloads and advertisements viewable at the disputed domain names. The Panel notes the similarity between the types of games offered on the <android4gamers.com>, <android-core.com>, <android-games-box.com>, <android-one.com>, <android-playing.com>, and <games-for-android.com> domain names and those offered through Complainant’s own websites. See Complaint, at Attached Exs. 6, 10. In Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001), the panel found that there was a high likelihood of confusion whenever a disputed domain name was used to promote goods similar to those sold under a complainant’s mark. The Panel here agrees that Respondent’s competitive video game offerings through the <android4gamers.com>, <android-core.com>, <android-games-box.com>, <android-one.com>, <android-playing.com>, and <games-for-android.com> domain names suggest Policy ¶ 4(b)(iv) bad faith, as Respondent may acquire financial gains through these schemes.
Complainant also argues that Respondent acquires advertisement revenue through its use of these domain names by confusing Internet users into believing that these advertisements originate from Complainant. The Panel notes that the remaining <captain-android.com> domain name includes hyperlink advertisements to Russian-language websites. See Complaint, at Attached Ex. 10. The Panel agrees that the use of this domain name to promote hyperlink advertisements, for the financial benefit of Respondent, evidences a Policy ¶ 4(b)(iv) attempt to attract commercial advertising revenues through the likelihood that Internet users will assume these hyperlinks are endorsed by, or affiliated with, Complainant. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant argues that Respondent knew of Complainant’s rights in the ANDROID mark prior to registering and using these domain names. Previous panels have concluded that constructive notice is not sufficient to support a bad faith finding. The Panel agrees with the previous panels on this point. On the other hand, 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 is GRANTED.
Accordingly, it is Ordered that the <android4gamers.com>, <android-core.com>, <android-games-box.com>, <android-one.com>, <android-playing.com>, <captain-android.com>, and <games-for-android.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: October 15, 2013
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