DECISION

 

Google LLC v. sohil memon

Claim Number: FA1803001779688

 

PARTIES

Complainant is Google LLC (ďComplainantĒ), represented by Jonathan S. Batchelor of Dickson Wright PLLC, Arizona, USA.† Respondent is sohil memon (ďRespondentĒ), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <googleplayservicesapk.com>, registered with GoDaddy.com, LLC.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 29, 2018; the Forum received payment on March 29, 2018.

 

On March 30, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <googleplayservicesapk.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.† 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 ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).

 

On April 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to postmaster@googleplayservicesapk.com.† Also on April 3, 2018, 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 Respondentís registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on April 9, 2018.

 

On April 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.

 

A timely Additional Submission was received from Complainant on April 16, 2018.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a Delaware limited liability company that offers a wide range of Internet-related goods and services, including search engine and online advertising services.

 

Complainant has rights in the GOOGLE mark through its trademark registration with the United States Patent and Trademark Office (ďUSPTOĒ) (e.g., Reg. No. 3,140,793, registered Sep. 12, 2006), and has rights in the GOOGLE PLAY mark based upon registration with Chinaís State Administration for Industry and Commerce (ďSAICĒ) (e.g., Reg. No. 11,383,999, registered Jan. 21, 2014).

 

Complainant has common law rights in the GOOGLE PLAY SERVICES mark. Respondentís <googleplayservicesapk.com> domain name is confusingly similar to Complainantís GOOGLE, GOOGLE PLAY, and GOOGLE PLAY SERVICES marks as Respondent merely adds the generic term ďapkĒ and the ď.comĒ generic top level domain (ďgTLDĒ) to the marks.

 

Respondent has no rights or legitimate interests in the <googleplayservicesapk.com> domain name as Respondent is not authorized or licensed to use Complainantís GOOGLE, GOOGLE PLAY, or GOOGLE PLAY SERVICES marks and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent attempts to impersonate Complainant and install malware on the computers of usersí who visit the website.

 

Respondent registered and is using the <googleplayservicesapk.com> domain name in bad faith as Respondent attempts to pass itself off as Complainant in order to distribute malware to usersí computers. Furthermore, it is inconceivable that Respondent registered the disputed domain name without actual knowledge of Complainantís rights in the GOOGLE, GOOGLE PLAY, or GOOGLE PLAY SERVICES marks.

 

B. Respondent

Respondent makes no contentions as to Policy ∂ 4(a)(i).

 

Respondent uses the <googleplayservicesapk.com> domain name to assist users in finding Complainantís products. Complainant acquired rights to the GOOGLE PLAY mark in 2012 and Complainant does not own the ď<googleplayservices.com>Ē domain name, which may indicate that anyone can register a domain name using the mark. Additionally, Respondent removed Complainantís GOOGLE logo from the <googleplayservicesapk.com> website. Finally, Respondent is not promoting malware, but rather a program from ďAPKMirror.com.Ē

 

Respondent did not register and use the <googleplayservicesapk.com> domain name in bad faith and it has been taken down.†

 

The Panel may note the <googleplayservicesapk.com> domain name domain name was registered on July 21, 2016.

 

C. Additional Submissions

In its Additional Submission Complainant contends as follows:

 

Respondentís actions prior to the filing of a complaint are not wiped away by curative steps taken only after receiving notice of a complaint.†

 

In its Response, Respondent admits that the primary purpose of Respondentís website is the distribution of Complainantís software, and it is undisputed that Respondent is not authorized to distribute Complainantís software. This use demonstrates bad faith.

 

FINDINGS

Complainant has rights in the GOOGLE and GOOGLE PLAY marks as demonstrated by its registration of such marks with the USPTO and SAIC. Complainant also has common law rights in GOOGLE PLAY SERVICES.

 

Complainantís rights in the GOOGLE, GOOGLE PLAY and GOOGLE PLAY SERVICES marks existed prior to Respondentís registration of the at-issue domain name.

 

Respondent uses the <googleplayservicesapk.com> domain name to divert internet traffic intended for Complainant to Respondentís website where it may exploit such traffic for its own benefit.

 

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."

 

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.

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainantís ownership of USPTO and SAIC trademark registration for the GOOGLE and GOOGLE PLAY trademarks evidences its rights in such marks for the purposes of Policy ∂ 4(a)(i). See Citigroup Inc. v. 刘军, FA 1716803 (Forum Mar. 27, 2017) (ďRegistration with the SAIC (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ∂4(a)(i).Ē).

 

Additionally, Respondentís domain name contains Complainantís entire GOOGLE, GOOGLE PLAY and GOOGLE PLAY SERVICES trademarks followed by the generic term ďatkĒ and the top level domain name ď.comĒ. The Panel notes that registration is not a necessary prerequisite to finding rights in a mark pursuant to Policy ∂ 4(a)(i) where a complainant demonstrates common law rights in a trademark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that ďThe Policy does not require a complainant to own a registered trademark prior to a respondentís registration if it can demonstrate established common law rights in the mark.Ē). Here, Complainant submits evidence of the widespread use of the GOOGLE PLAY SERVICES mark, including over 5 billion downloads and that Complainant has continuously used the GOOGLE PLAY SERVICES marks since 2012. Thereby, Complainant shows that its GOOGLE PLAY SERVICES mark has acquired secondary meaning so as to allow the Panel to find that Complainant has common law trademark rights in such mark for the purposes of the Policy. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including ďlongstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.Ē).

 

Additionally, the differences between the <googleplayservicesapk.com> domain name and Complainantís Google trademarks are insufficient to distinguish the domain name from any of Complainantís trademarks for the purposes of the Policy. Respondentís domain name contains each of Complainantís trademarks (less any spaces) in its entirety and merely adds the generic term ďapkĒ and a necessary top level domain name, here ď.comĒ to complete the <googleplayservicesapk.com> domain name.† Therefore, the Panel finds that pursuant to Policy ∂ 4(a)(i) Respondentís domain name is confusingly similar to Complainantís GOOGLE PLAY SERVICES trademark, as well as its GOOGLE and GOOGLE PLAY trademarks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainantís entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).

 

Finally, Respondent does not take issue with Complainantís Policy ∂ 4(a)(i) assertions regarding either Complainantís rights in a mark or the confusing similarity between its claimed trademarks and the at-issue domain name.

 

Rights or Legitimate Interests

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. Entmít Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainantís prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the <googleplayservicesapk.com> domain name. Respondent is not authorized to use Complainantís trademarks 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 the at‑issue domain name.

 

WHOIS information for the at-issue domain name identifies its registrant as ďsohil memon.Ē The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <googleplayservicesapk.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ∂ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Furthermore, Respondent uses the at-issue domain name to addresses a website that gives site visitors the false impression that the domain name and website are sponsored or endorsed by Complainant. Screen shots of the <googleplayservicesapk.com> website show that the website displays Complainantís GOOGLE PLAY SERVICES logo. Also, Complainant argues, but Respondent denies, that Respondent is intent on visitors downloading malware via links from the <googleplayservicesapk.com> website. Respondentís use of the domain name in this manner does not constitute a bona fide offering, noncommercial or fair use per Policies ∂ 4(c)(i) & (iii). See Nokia Corp.† v. Eagle,† FA 1125685 (Forum Feb. 7, 2008) (finding the respondentís 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 Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondentís use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses ďfailed 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)Ē).

 

Respondentís contention that it has rights and legitimate interests in the at-issue domain name because it registered such domain name to help others find Complainantís goods and service is wholly without merit. The implication that Complainant, search engine giant GOOGLE, somehow needs a third party so others may find GOOGLE products is not credible, to say the very least. Even if true, such fact would be irrelevant to the determination of any issue before the Panel. Respondentís admitted desire to provide a service related to Complainant, does not give Respondent a good faith basis to use Complainantís trademarks to do so absent Complainantís consent. Similarly, Respondentís assertion that Complainant failed to register any domain name containing the GOOGLE PLAY SERVICES mark is also irrelevant to Respondentís rights and legitimate interests, or lack thereof, in the at-issue domain name. Likewise irrelevant is Respondentís reference to supposed remedial actions taken by Respondent commencing subsequent to notification of the filing of the instant complaint; such actions may be (and are) disregarded by the Panel for the purposes of the Policy. See PayPal, Inc. v. David Weiss / Paybyweb, Inc., FA1740061 (Forum Aug. 17, 2017) (ďA Respondentís use is determined at the time of the filing of the complaint.Ē); see also, Fanuc Corporation v. SC Metalkid 2008 SRL and Alunăriței Liliana, D2016-0005 (WIPO June 17, 2016) (ďRespondentís rights or legitimate interest is typically assessed at the time of the Complaint filing.Ē). †Respondent thus fails to successfully counter Complainantís prima facie showing that Respondent lacks rights and legitimate interests in respect of the <googleplayservicesapk.com> domain name.

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondentís lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ∂ 4(a)(ii).

 

Registration and Use in Bad Faith

Respondentís <googleplayservicesapk.com> domain name was registered and used in bad faith. As discussed below without limitation, 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 regarding the at-issue domain name, pursuant to paragraph 4(a)(iii) of the Policy.

 

As mentioned above regarding rights and legitimate interests, Respondent attempts to impersonate Complainant so that it may trick visitors to the <googleplayservicesapk.com> website into downloading malware. Passing itself off as Complainant and attempting to download malware demonstrates Respondentís bad faith registration and use of the at-issue domain name under Policy ∂ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ∂ 4(b)(iv) where ďRespondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainantís own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.Ē)† Even if Respondentís only desired is that visitors to its <googleplayservicesapk.com> website download benign software as Respondent suggests, Respondentís unauthorized use of Complainantís trademark for such purpose nevertheless shows Respondent to be acting in bad faith under Policy ∂ 4(b)(iv). Victoriaís Secret Stores Brand Management, Inc. v. Lewis, FA1337417 (Forum Sept. 2, 2010) (finding that the similarity of respondentís domain name and complainantís mark evidenced an intention by respondent to capitalize on complainantís fame and to profit by attracting Internet users to respondentís website, revealing bad faith registration and use of the disputed domain name under Policy ∂ 4(b)(iv));

 

Moreover, Respondent registered <googleplayservicesapk.com> knowing that Complainant had trademark rights in the GOOGLE, GOOGLE PLAY and the GOOGLE PLAY SERVICES trademarks. Respondentís prior knowledge is evident given the notoriety of Complainantís trademarks, given Respondentís use of Complainantís trademarks on the <googleplayservicesapk.com> website, and via Respondentís admissions regarding Complainant in its Response. It follows that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondentís prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <googleplayservicesapk.com> domain name 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 <googleplayservicesapk.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:† April 17, 2018

 

 

 

 

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