Google Inc. v. WEI ZHANG
Claim Number: FA1403001551141
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is WEI ZHANG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <google-android-security.com>, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2014; the National Arbitration Forum received payment on March 27, 2014.
On April 1, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <google-android-security.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. 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 April 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@google-android-security.com. Also on April 8, 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 May 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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)
Complainant uses its GOOGLE and ANDROID marks in connection with a variety of online and electronic goods and services. Complainant has obtained United States Patent and Trademark Office ("USPTO") registration for the GOOGLE mark (Reg. No. 2,806,075, registered January 20, 2004). Complainant has also registered the ANDROID mark with the Office for Harmonization in the Internal Market ("OHIM") (Reg. No. 8,458,309, registered March 8, 2010).
The <google-android-security.com> domain name is confusingly similar to Respondent’s trademarks. Respondent combined the GOOGLE and ANDROID marks, and merely adds the phrase “security.” The additions of the generic top-level domain ("gTLD") “.com” and hyphens are not relevant here.
Policy ¶ 4(a)(ii)
Respondent has never been commonly known by the <google-android-security.com> domain name, and is not now known by the <google-android-security.com> domain name. The WHOIS information identifies this domain name’s registrant as “Wei Zhang.”
Respondent uses the <google-android-security.com> domain name to serve as a login page for a third-party service provider.
Respondent also operates a sub-domain through the <google-android-security.com> domain name wherein Internet users are afflicted with malicious software.
Policy ¶ 4(a)(iii)
Respondent is offering competing services that necessarily disrupt Complainant’s business.
Respondent had to have known of Complainant’s rights in the GOOGLE and ANDROID marks prior to domain name registration. It is inconceivable Respondent would otherwise combine both of Complainant’s distinct trademarks.
Respondent is pushing a malware scam onto Internet users through its use of this domain name.
Respondent’s Contentions
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 uses its GOOGLE and ANDROID marks in connection with a variety of online and electronic goods and services. Complainant has obtained USPTO registration for the GOOGLE mark (Reg. No. 2,806,075, registered January 20, 2004). Complainant has also registered the ANDROID mark with the OHIM (Reg. No. 8,458,309, registered March 8, 2010). These respective registrations evidence Complainant’s Policy ¶ 4(a)(i) rights in its trademarks. See State Farm Mutual Auto. Ins. Co. v. Hildegard Gruener, FA 1521506 (Nat. Arb. Forum Oct. 22, 2013) (Finding complainant has rights in the STATE FARM mark through its various registrations with the USPTO, CIPO, MIIP and OHIM.).
Complainant argues the <google-android-security.com> domain name is confusingly similar to Respondent’s trademarks. Complainant notes Respondent combined the GOOGLE and ANDROID marks, and adds the phrase “security.” Complainant suggests the addition of the gTLD “.com” and hyphens are not relevant here. The Panel agrees that the generic term “security,” the gTLD, and the addition of hyphens, fail to distinguish this domain name from the underlying marks. See Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD). The Panel agrees that the combination of the GOOGLE and ANDROID marks amplifies confusing similarity. See M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks). The Panel finds the <google-android-security.com> domain name is confusingly similar to Respondent’s trademarks under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 claims Respondent has never been commonly known by the <google-android-security.com> domain name, and is not now known by the <google-android-security.com> domain name. Complainant notes the WHOIS information identifies this domain name’s registrant as “Wei Zhang.” In LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) the panel declined to make findings under Policy ¶ 4(c)(ii) when there was no evidence in the record to associate the respondent with the domain name. The Panel finds Respondent is not known by the <google-android-security.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the <google-android-security.com> domain name to serve as a login page for a third-party service provider. The Panel notes the domain name resolves to a website promoting cloud storage services. As Complainant offers similar services through its marks, the Panel finds that Respondent’s competing use of this domain name serves no Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not 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).”).
Complainant further points out that Respondent operates a sub-domain through the <google-android-security.com> domain name wherein Internet users are afflicted with malicious software. The Panel agrees that the proliferation of malware is evidence in itself that Respondent lacks any Policy ¶ 4(a)(ii) right or legitimate interest in this <google-android-security.com> domain name. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant argues that Respondent is offering competing services through the <google-android-security.com> domain name that necessarily disrupt Complainant’s business. The Panel notes the cloud computing services offered through the domain name. The Panel finds these activities to be competitive to Complainant’s efforts under the GOOGLE and ANDROID marks and the Panel finds Policy ¶ 4(b)(iii) bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent is pushing a malware fraud onto Internet users through its use of this domain name. In Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010), the panel found that a malware scheme constituted evidence of Policy ¶ 4(a)(iii) bad faith. The Panel finds that Respondent’s use of the domain name to host malicious software is evidence of Policy ¶ 4(a)(iii) bad faith.
Complainant also claims that Respondent had to have known of Complainant’s rights in the GOOGLE and ANDROID marks prior to domain name registration. Complainant states it is inconceivable Respondent would otherwise combine both of Complainant’s distinct trademarks. The Panel agrees that Respondent’s use of both trademarks in the domain name creates an inference as to Policy ¶ 4(a)(iii) bad faith registration of the domain name due to actual notice of Complainant’s rights in the marks. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <google-android-security.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 6, 2014
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