Google Inc. v. Scott Litoline / SLA
Claim Number: FA1402001542043
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, Washington D.C., USA. Respondent is Scott Litoline / SLA (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <androidsecurityfree.org>, <androidadblocker.com>, <androidbatterybooster.net>, <androidbatterybooster.org>, <androidphoneguard.com>, <androidspeedbooster.com>, <androidutilityapps.org>, <battery-updates-android.com>, <battery-updates-android.net>, and <everything-android.org>, registered with Enom, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2014; the National Arbitration Forum received payment on February 4, 2014.
On February 4, 2014, and February 11, 2014, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <androidsecurityfree.org>, <androidadblocker.com>, <androidbatterybooster.net>, <androidbatterybooster.org>, <androidphoneguard.com>, <androidspeedbooster.com>, <androidutilityapps.org>, <battery-updates-android.com>, <battery-updates-android.net>, and <everything-android.org> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 February 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2014 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@androidsecurityfree.org, postmaster@androidadblocker.com, postmaster@androidbatterybooster.net, postmaster@androidbatterybooster.org, postmaster@androidphoneguard.com, postmaster@androidspeedbooster.com, postmaster@androidutilityapps.org, postmaster@battery-updates-android.com, postmaster@battery-updates-android.net, and postmaster@everything-android.org. Also on February 11, 2014, 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 March 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has offered a software platform and operating system under the ANDROID mark since 2007. Complainant states that Android is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices. Complainant has registered the ANDROID mark in numerous countries around the world; its United States trademark application, filed in 2007, remains pending. Complainant claims that its ANDROID mark has become famous as a result of the substantial resources Complainant has invested promoting the mark and its associated products and services, the substantial media coverage that the Android platform has received.
The disputed domain names, registered by Complainant between October 2011 and February 2013, all incorporate Complainant’s ANDROID mark, together with other generic and descriptive terms associated with Complainant and its Android platform. On this basis Complainant contends that the disputed domain names are confusingly similar to Complainant’s ANDROID mark.
Complainant states that the <androidsecurityfree.org> domain name has been used for various web pages that mimic Complainant’s own web pages, and to distribute software that triggers deceptive “pop-up” advertisements and contains a virus. Complainant states further that the <androidadblocker.com>, <androidbatterybooster.net>, <androidbatterybooster.org>, <androidphoneguard.com>, <androidspeedbooster.com>, and <everythingandroid.org> domain names resolve to a parking page that contains sponsored links to third-party websites. Complainant states that there is no evidence that the remaining three domain names, <battery-updates-android.com>, <battery-updates-android.net>, and <androidutilityapps.org>, have ever resolved to an active website. Complainant states that it has not authorized Respondent to register or use the disputed domain names, that Respondent is not affiliated with Complainant, and that Respondent is not known by the domain names or the ANDROID mark. Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names, and that Respondent lacks rights or legitimate interests therein.
Complainant alleges that Respondent’s activities indicate that Respondent was aware of Complainant’s mark when it registered each of the disputed domain names, and that Respondent’s registration of multiple domain names containing Complainant’s mark is evidence of a pattern of bad faith registration under the Policy. On these grounds Complainant contends that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and have been 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 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.”).
Although Complainant’s U.S. trademark application remains pending, Complainant has rights in the ANDROID mark for purposes of Paragraph 4(a)(i) of the Policy by virtue of its non-U.S. trademark registrations. All of the disputed domain names incorporate Complainant’s mark, together with various related generic and descriptive terms, and the top-level domain suffixes “.com”, “.org”, and “.net”. These additions do not substantially diminish the similarity between the domain names and Complainant’s mark. See, e.g., Google Inc. v. Domain Admin, PrivacyProtect.org, FA 1538409 (Nat. Arb. Forum Feb. 21, 2014) (finding <playmarket-android.com> and <play-market-android.com> confusingly similar to ANDROID); America Online, Inc. v. Oshideri, FA 162174 (Nat. Arb. Forum July 25, 2003) (finding <aolutility.biz> confusingly similar to AOL and AOL.COM). The Panel finds that the disputed domain names are confusingly similar to Complainant’s ANDROID mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain names all incorporate Complainant’s mark without authorization. Some of the domain names have been used to promote competing products and services, while others do not appear to have been used at all. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” Previous Panels have found bad faith under circumstances involving the use of a domain name to link to commercial websites that compete with a Complainant, e.g., Google Inc. v. Domain Admin, PrivacyProtect.org, supra, and where a domain name is used to distribute malware in a deceptive manner, e.g., Twitter, Inc. v. Moniker Privacy Services/ accueil des solutions inc, D2013-0062 (WIPO Apr. 1, 2013). Respondent’s registration of multiple domain names that incorporate Complainant’s mark, together with the use of one of the domain names to distribute deceptive malware and of others to link to commercial websites that compete with Complainant, is indicative of bad faith under the Policy. Based upon Respondent’s pattern of conduct the Panel extends this finding of bad faith to all of the disputed domain names.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <androidsecurityfree.org>, <androidadblocker.com>, <androidbatterybooster.net>, <androidbatterybooster.org>, <androidphoneguard.com>, <androidspeedbooster.com>, <androidutilityapps.org>, <battery-updates-android.com>, <battery-updates-android.net>, and <everything-android.org> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 12, 2014
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