Google LLC v. DIGITAL MARKETING AND SOLUTIONS PTY LTD
Claim Number: FA1808001799663
Complainant is Google LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is DIGITAL MARKETING AND SOLUTIONS PTY LTD (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <android-enjoyed.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2018; the Forum received payment on August 1, 2018.
On August 6, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <android-enjoyed.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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2018 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@android-enjoyed.com. Also on August 13, 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 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 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, GOOGLE LLC, offers a software platform and operating system under its ANDROID mark. Complainant established rights in the ANDROID mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,467,615, registered July 15, 2008). See Compl. Ex. 12. Respondent’s <android-enjoyed.com> domain name is confusingly similar to Complainant’s ANDROID mark as it merely adds a hyphen, the generic term “enjoyed” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <android-enjoyed.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its ANDROID mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “DIGITAL MARKETING AND SOLUTIONS PTY LTD” as the registrant. See Compl. Ex. 4. Respondent is not using the <android-enjoyed.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website featuring Complainant’s ANDROID mark and products that compete with Complainant’s software business.
Respondent registered and is using the <android-enjoyed.com> domain name in bad faith. Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Further, Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the ANDROID mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the technology, communications and related industries that offers a software platform and operating system under its ANDROID mark.
2. Complainant has established its rights in the ANDROID mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,467,615, registered July 15, 2008).
3. The <android-enjoyed.com> domain name was originally registered on March 7, 2012 and Respondent is the current registrant of the domain name.
4. Respondent uses the disputed domain name to resolve to a website featuring Complainant’s ANDROID mark and products that compete with Complainant’s software business.
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(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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends it has rights in its ANDROID mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,467,615, registered July 15, 2008). See Compl. Ex. 12. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. 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.”). As such, the Panel finds that Complainant has established rights in the ANDROID mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ANDROID mark. Complainant submits that Respondent’s <android-enjoyed.com> domain name is confusingly similar to Complainant’s ANDROID mark as it merely adds a hyphen, the generic term “enjoyed” and the gTLD “.com.” The addition of a hyphen, generic term and gTLD may not sufficiently distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Accordingly, the Panel concludes that Respondent’s <android-enjoyed.com> domain name is confusingly similar to Complainant’s ANDROID mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ANDROID trademark and to use it in its domain name, adding the generic word “enjoyed” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <android-enjoyed.com> domain name on March 7, 2012 and Respondent is the current registrant of the domain name;
(c) Respondent uses the disputed domain name to resolve to a website featuring Complainant’s ANDROID mark and products that compete with Complainant’s software business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its ANDROID mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the<android-enjoyed.com> domain name lists “DIGITAL MARKETING AND SOLUTIONS PTY LTD” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <android-enjoyed.com> domain name;
(f) Complainant submits that Respondent uses the <android-enjoyed.com> domain name to pass itself off as Complainant by resolving to a website featuring Complainant’s ANDROID mark and products that compete with Complainant’s software business. Under Policy ¶¶ 4(c)(i) and (iii), use of a domain name to pass off as a complainant and sell competing products may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (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 provided screenshots of the website to which the <android-enjoyed.com> domain name resolves, indicating that the site purports to offer mobile phones, laptops, tablets and drones for purchase and which buyers may “enjoy”. See Compl. Ex. 14. Accordingly, the Panel finds that Respondent uses the <android-enjoyed.com> domain name to host a competing website and that Respondent failed to use the disputed domain name for a legitimate Policy ¶¶ 4(c)(i) or (iii) use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Per Policy ¶ 4(b)(iv), use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein for commercial gain may evidence bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel notes that Complainant provided screenshots of the website to which the <android-enjoyed.com> domain name resolves, which indicate that the site features Complainant’s ANDROID mark and offers products that directly compete with Complainant’s software business and which buyers may “enjoy”. See Compl. Ex. 14. As such, the Panel holds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the ANDROID mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s ANDROID mark has created significant good will and consumer recognition around the world and was first used by Complainant in 2007. See Compl. p. 4. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the <android-enjoyed.com> domain name was registered and subsequently used.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ANDROID mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <android-enjoyed.com> domain name be TRANSFERRED from Respondent to Complainant .
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 20, 2018
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