DECISION

 

Google Inc. v. Yang Kyung Won

Claim Number: FA1707001742527

 

PARTIES

Complainant is Google Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA.  Respondent is Yang Kyung Won (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <androidfreeapps.com>, <androidhilfe.com>, <androidmob.com>, and <googleland.com>, registered with Megazone Corp., dba HOSTING.KR.

 

PANEL

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, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 31, 2017; the Forum received payment on July 31, 2017. The Complaint was submitted in both Korean and English.

 

On August 9, 2017, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <androidfreeapps.com>, <androidhilfe.com>, <androidmob.com>, and <googleland.com> domain names are registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the names.  Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR 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 18, 2017, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of September 7, 2017 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@androidfreeapps.com, postmaster@androidhilfe.com, postmaster@androidmob.com, postmaster@googleland.com.  Also on August 18, 2017, the Korean language 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 7, 2017, Complainant submitted Additional Submission. On September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) 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 <androidfreeapps.com>, <androidhilfe.com>, and <androidmob.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 (“gTLD”) “.com.”

 

ii) Complainant has rights in the GOOGLE mark through its registration with the USPTO (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). Respondent’s <googleland.com> is confusingly similar to the GOOGLE mark because it includes the full mark and merely adds a generic word and the gTLD “.com.”

 

iii) Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain names based on the WHOIS of record. Further, Respondent makes no bona fide offering of goods or services or any legitimate noncommercial or fair use through the domain names. Rather, Respondent operates websites that direct Internet users to third party websites by passing itself off as Complainant online. Additionally, <androidfreeapps.com>, <androidhilfe.com>, and <androidmob.com> resolve to “related links” that incorporate Complainant’s mark and from which Respondent presumably nets click-through fees.

 

iv) Respondent registered and used the domain names in bad faith. Respondent offered the domain names to Complainant in excess of out-of-pocket costs in violation of Policy ¶ 4(b)(i). The registration of several domain names incorporating Complainant’s marks imputes Policy ¶ 4(b)(ii). Furthermore, Respondent has acted in a fashion proscribed by Policy ¶ 4(b)(iv) by including competing click-through links on its resolving websites. Lastly, Respondent had actual knowledge of Complainant due to Complainant’s fame and the elements of the domain names, which incorporate Complainant’s marks fully.

 

B. Respondent

Respondent did not submit a Response. The Panel notes the following registration dates for the disputed domain names:

 

<androidfreeapps.com>......................................................................... May 17, 2011;

<androidhilfe.com>................................................................................... April 7, 2011;

<androidmob.com>............................................................... September 2, 2011; and

<googleland.com>............................................................................ January 12, 2011.

 

C. Complainant's Additional Submissions

 

Respondent has attempted to capitalize on the disputed domain names at issue in this proceeding by offering to sell the domain names to Complainant for $1,600 USD – an amount that far exceeds Respondent’s out-of-pocket costs.  Respondent’s offer to sell the disputed domain name provides additional grounds for a finding of bad faith. Upon receipt of Respondent’s offer, Complainant immediately responded, demanding the immediate transfer of the disputed domain names.  To date, Complainant has received no response from the registrant or the registrar acting on its behalf.  Accordingly, the Panel should find Respondent registered and is using the disputed domain names in bad faith.

 

FINDINGS

Complainant established that it had rights in the marks contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainants protected marks.

 

Respondent has no rights to or legitimate interests in the disputed domain names.

  

Respondent registered and used the disputed domain names in bad faith.

 

DISCUSSION

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."

 

Preliminary Issue:  Language of the Proceedings

 

The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.

 

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(f), 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 (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.”).

 

Identical and/or Confusingly Similar

 

ANDROID MARK

 

Complainant purports it owns the ANDROID mark through its registration with the USPTO (e.g., Reg. No. 3,467,615, registered July 15, 2008). USPTO registrations are considered adequate representations of rights under the Policy. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel finds Complainant has rights in the ANDROID mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues that the <androidfreeapps.com>, <androidhilfe.com>, and <androidmob.com> domain names are confusingly similar to the ANDROID mark. Each domain name merely adds a generic word and inserts the gTLD “.com.” 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 (Forum Nov. 4, 2010) (concluding that the addition of the gTLD “.com” does not distinguish the disputed domain name from the mark). The Panel here finds that the disputed domain names are confusingly similar to Complainant's ANDROID mark under Policy ¶ 4(a)(i).

 

GOOGLE MARK

 

Complainant claims it has rights in the GOOGLE mark through its registration with the USPTO (e.g., Reg. No. 2,806,075, registered Jan. 20, 2004). Registrations with the USPTO (or any other governmental trademark authority) are sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel agrees Complainant has rights in the GOOGLE mark under Policy ¶4(a)(i).

 

Further, Complainant contends Respondent’s <googleland.com> is confusingly similar to the GOOGLE mark because it includes the full mark and merely adds a generic word (“land”) and the gTLD “.com.” A generic term couple with “.com” may not distinguish a domain name from a mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)). Accordingly, the Panel agrees Respondent’s <googleland.com> is confusingly similar to the GOOGLE mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 (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 (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 asserts Respondent has no rights or legitimate interests in the domain names. First, Complainant contends Respondent is not commonly known by the domain names based on the WHOIS of record. 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 domain names. See Reese v. Morgan, FA 917029 (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). The Panel notes the WHOIS of record lists “Yang Kyung Won.” Therefore, the Panel agrees that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).

 

Further, Complainant asserts Respondent makes no bona fide offering of goods or services or any legitimate noncommercial or fair use through the domain names. Rather, Respondent allegedly operates websites that direct Internet users to third party websites by passing itself off as Complainant online. Additionally, <androidfreeapps.com>, <androidhilfe.com>, and <androidmob.com> resolve to “related links” that incorporate Complainant’s mark and from which Respondent presumably nets click-through fees. Passing off and utilization of click-through links, whether competing or non-competing, cannot evince rights and legitimate interests. See Nokia Corp.  v. Eagle,  FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant provides a screenshot of the pertinent website, showing the resolving <googleland.com> website and the “automall” logo modeled after the GOOGLE mark. Complainant also provides the resolving websites for <androidfreeapps.com>, <androidhilfe.com>, and <androidmob.com>, which display the following links: “Free Android Apps Downloads,” “Apps on Android,” and “Android Games.” The Panel agrees that both uses of the domain names do not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair uses.

 

Registration and Use in Bad Faith

 

Complainant contends Respondent registered and used the domain names in bad faith. Respondent purportedly offered the domain names to Complainant in excess of out-of-pocket costs in violation of Policy ¶ 4(b)(i). See Correspondence—Complainant (Sept. 7, 2017). Such an offer to a complainant may indicate bad faith. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)). Complainant, in email correspondence, indicates that Respondent intended to sell Complainant all the domain names at issue for $1,600 USD. See Correspondence—Complainant (Sept. 7, 2017) (stating, “This is Myungsoo Lee in HOSTING.KR of registrar for the dispute domain name <androidfreeapps.com>,<androidhilfe.com>,<androidmob.com>,<googleland.com>.

Current registrant want to sell the domain name $1,600($400 per a domain). 

Is it available?? If the selling is available, I will forward to current registrant.”). The Panel agrees that this amounts to bad faith under Policy ¶ 4(b)(i).

 

Next, Complainant argues that the registration of several domain names incorporating Complainant’s marks imputes Policy ¶ 4(b)(ii). Registration of four domain names which include a complainant’s marks may indicate a bad faith pattern. See Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>,<radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Accordingly, while Respondent here has registered four domain names which incorporate Complainant’s marks, the Panel finds that a bad faith pattern of domain name registrations exists under Policy ¶ 4(b)(ii).

 

Furthermore, Complainant claims that Respondent has acted in a fashion proscribed by Policy ¶ 4(b)(iv) by including competing click-through links on its resolving websites. 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: “Free Android Apps Downloads,” “Apps on Android,” and “Android Games.”  The Panel agrees that each is likely a pay-per-click link designed to financially benefit Respondent. Therefore, the Panel finds 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 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 (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).

 

Lastly, Complainant argues 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 and GOOGLE marks. Given the foregoing, the Panel finds that 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. The Panel concludes that Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <androidfreeapps.com>, <androidhilfe.com>, <androidmob.com>, and <googleland.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <androidfreeapps.com>, <androidhilfe.com>, <androidmob.com>, and <googleland.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Ho Hyun Nahm, Esq., Panelist

Dated:  September 25, 2017

 

 

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