Google Inc. v. Whois Privacy Corp. / Domain Admin
Claim Number: FA1508001632285
Complainant is Google Inc. (“Complainant”), represented by Morgan Champion of Cooley LLP, Washington, D.C., USA. Respondent is Whois Privacy Corp. / Domain Admin (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <androidone.com>, registered with Internet.bs Corp.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2015; the Forum received payment on August 10, 2015.
On August 10, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <androidone.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 August 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@androidone.com. Also on August 11, 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 September 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns hundreds of registrations for the ANDROID mark, including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,729,178, registered Dec. 22, 2009). Complainant offers a mobile platform and powers hundreds of millions of phones, tablets and other devices, and uses the ANDROID mark to promote its goods and services. The <androidone.com> domain name is confusingly similar to the ANDROID mark. The domain name contains Complainant’s mark in full, adds the generic term “one,” and attaches the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the <androidone.com> domain name makes no mention of the domain name or the mark as Respondent’s name. Further, Complainant has never authorized or licensed Respondent to use the ANDROID trademark. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name does not resolve to an active website.
Respondent has engaged in bad faith registration and use of the <androidone.com> domain name. Respondent uses the disputed domain to resolve to an inactive page, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Additionally, the disputed domain name was transferred the day after Complainant publicly announcement of its “Android One” standardization program, which is evidence of opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google Inc. of Mountain View, CA, USA. Complainant was established in 1997 and has offered a broad array of technological products and services since that time under its GOOGLE mark. Since 2007 it has offered additional products and services under the mark ANDROID. Google owns registrations for the ANDROID mark in the USA and throughout the world.
Respondent is Whois Privacy Corp. / Domain Admin, Nassau, The Bahamas. Respondent’s registrar’s address is listed as the same. The Panel notes that the <androidone.com> domain name was registered on or about November 6, 2007.
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 contends that it owns hundreds of registrations for the ANDROID mark, including registration with the USPTO (e.g., Reg. No. 3,729,178, registered Dec. 22, 2009). Complainant states that it offers a mobile platform and powers hundreds of millions of phones, tablets, and other devices, and uses the ANDROID mark in connection with its goods and services. Previous panels have found that registration of a mark with a federal authority is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i), even where the respondent reportedly resides in a different jurisdiction. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). In addtion, Complainant argues that the disputed domain name was transferred to the current registrant, Respondent, on June 26, 2014. Prior panels have found that the relevant date for determining rights in a domain name is the date it is acquired by the named registrant. See BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) (finding that registration refers to the date when the respondent acquired the name from the person who first registered it). The Panel here finds that Complainant has established rights in the ANDROID mark under Policy ¶ 4(a)(i), and those rights predate Respondent’s June 26, 2014 acquisition of the disputed domain name.
Complainant alleges that the <androidone.com> domain name is confusingly similar to the ANDROID mark. The domain name contains Complainant’s mark in full, adds the generic term “one,” and attaches the gTLD “.com” to the mark. Prior panels have found that adding a generic term does little to remove confusing similarity from disputed mark. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). Further, the addition of a gTLD does not serve to adequately distinguish the disputed domain name from the registered mark. See 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). The Panel here finds that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the <androidone.com> domain name makes no mention of the domain name or the mark as Respondent’s name. The Panel notes that the WHOIS information for the disputed domain name refers to “Whois Privacy Corp. / Domain Admin” as the registrant of record. Further, Complainant contends that it has never authorized or licensed Respondent to use the ANDROID trademark. As Respondent has failed to submit a response in this proceeding, or any evidence to the contrary, the Panel finds that Complainant’s contentions are sufficient to establish that Respondent is not commonly known by the <androidone.com> domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the disputed domain name is further evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. According to Complainant, Respondent’s disputed domain name does not resolve to an active website. Past panels have found that a respondent’s failure to use the domain name is not a bona fide offering of goods or services under Policy ¶4 (c)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel here finds that Respondent has failed to actively use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use and that Respondent has not established rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
While Complainant does not make any contentions that fall within the provisions of Policy ¶ 4(b), the Panel notes that these provisions are merely intended to illustrate bad faith activities, and Respondent’s bad faith may be demonstrated by a variety of allegations and viewed under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant asserts that Respondent uses the disputed domain to resolve to an inactive page, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Prior panels have held that failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel here finds that Respondent’s failure to make an active use of the disputed domain name over a year after it was transferred to Respondent, indicates bad faith registration under Policy ¶ 4(a)(iii).
Additionally, Complainant alleges that the disputed domain name was transferred the day after Complainant’s public announcement of its “Android One” standardization program, which is evidence of opportunistic bad faith. Complainant argues that this timing is not a mere coincidence but instead reflects Respondent’s attempt to capitalize on Complainant’s ANDROID mark and the “Android One” program specifically. Previous panels have agreed that opportunistic bad faith exists where a respondent registers or purchases a disputed domain name immediately after a public announcement. See Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”). The Panel here finds Respondent’s actions to be additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <androidone.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 18, 2015
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