Google Inc. v. Abraham Joseph
Claim Number: FA1504001616022
Complainant is Google Inc. (“Complainant”), represented by Morgan A. Champion of Cooley LLP, Washington, D.C., USA. Respondent is Abraham Joseph (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com>, registered with Godaddy.Com, Llc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2015; the Forum received payment on April 24, 2015.
On April 24, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc 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 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2015 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@androidaero.com, postmaster@androidfashion.com, postmaster@androidinsights.com, postmaster@androidwear.com, postmaster@exclusiveandroid.com, postmaster@luxuryandroid.com. Also on April 30, 2015, 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 June 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 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 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 contends as follows:
Complainant owns the ANDROID mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,467,615, registered July 15, 2008).
Complainant uses the ANDROID mark in connection with its variety of technological and mobile products and services, as well as a software platform and operating system.
The <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain names are confusingly similar to the ANDROID mark. Each domain name merely adds a generic word and inserts the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as the WHOIS record for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. Further, Complainant has never authorized Respondent to use the ANDROID mark. Respondent’s lack of rights or legitimate interests in the <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s <androidaero.com> domain name resolves to a parked page that lacks any substantive content. Respondent’s <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain names resolve to parked pages that have been monetized with click-through advertisements. Further, the domain name <androidwear.com> was offered for sale, which indicates that Respondent lacks rights and legitimate interests in the domain name.
Respondent has engaged in bad faith registration and use of the <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain names. Respondent has offered the <androidwear.com> for sale in excess of out-of-pocket costs. Further, as Respondent has registered numerous infringing domain names, Respondent has engaged in a pattern of bad faith registration and use. Additionally, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent registered the disputed domain name with knowledge of Complainant’s rights in the mark, which is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ANDROID mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademark.
Respondent uses the at-issue domain names to address to address parked pages that either lack any substantive content (<androidaero.com>), or have been monetized with click-through advertisements (<androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com>).
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the ANDROID trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent forms each at-issue domain name by adding a single generic word, (“aero,” “fashion,” “insights,” “wear,” “exclusive,” or “luxury,”) to Complainant’s ANDROID trademark and appending the top-level domain name “.com” to the resulting string. The ensuing differences between Complainant’s trademark and each of the at-issue domain names are insufficient to distinguish any of the domain names from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain name are each confusingly similar to Complainant’s ANDROID mark. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also, OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
WHOIS information for the at-issue domain name lists “Abraham Joseph” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any the <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain names. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com> and <luxuryandroid.com> domain names each resolve to parked pages that have been monetized with click-through advertisements. Using the domain names in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)). Additionally, the <exclusiveandroid.com> domain name addresses a parked webpage lacking any substantial content which also constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Staples, Inc. v. Conrad, D2003-0713 (WIPO Oct. 27, 2003) (holding respondent lacked any right or legitimate interest in domain name featuring famous STAPLES mark that resolved to webpage lacking any substantive content).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names.
Each of the at-issue domain names was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances, as well as other circumstance, are present which compel the Panel to conclude that Respondent acted in bad faith in registering and using each of the domain names pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent offered the <androidwear.com> for sale in excess of out-of-pocket costs. The domain name was listed for sale at a minimum price of $49,999. Respondent also stated that it would not transfer the domain name because it planned to sell the domain name for a substantial sum. Respondent’s offer to sell the <androidwear.com> domain name suggests Respondent’s bad faith under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Second, Respondent registered numerous infringing domain names. Here, Respondent registered six names that are confusingly similar to Complainant’s famous ANDROID mark suggesting Respondent’s bad faith pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Third, Respondent uses the domain names to misrepresent that they are connected with or sponsored by Complainant, when they are not. When an Internet visitor encounters The webpages that are referred by most of the domain names, he or she may click on links such as: “Low Income Cell Program,” “My Comic Shop,” and “Watch Movies Online.” Each is likely a pay-per-click link designed to financially benefit Respondent. Therefore, it is clear that Respondent desires to attract Internet users to the offending webpages by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the webpages. Importantly, such use of the domain names demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also, MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Finally, Respondent registered each of the <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain names knowing that Complainant had trademark rights in the ANDROID mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s multiple registrations of domain names containing the ANDROID mark. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names precisely to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <androidaero.com>, <androidfashion.com>, <androidinsights.com>, <androidwear.com>, <exclusiveandroid.com> and <luxuryandroid.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 2, 2015
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