Google LLC v. MAXO GROUP LTD / MAXO GROUP
Claim Number: FA1812001820047
Complainant is Google LLC (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, District of Columbia, USA. Respondent is MAXO GROUP LTD / MAXO GROUP (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <androidapkbaixar.com>, <androidapkdescargar.com>, and <androidapktelecharger.com>, registered with NameSilo, 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 December 7, 2018; the Forum received payment on December 7, 2018.
On December 8, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <androidapkbaixar.com>, <androidapkdescargar.com>, and <androidapktelecharger.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@androidapkbaixar.com, postmaster@androidapkdescargar.com, postmaster@androidapktelecharger.com. Also on December 10, 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 December 4, 2019, 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, 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”).
Respondent’s <androidapkbaixar.com> and <androidapkdescargar.com> domain names are confusingly similar to Complainant’s ANDROID mark as the mark is incorporated in its entirety and is differentiated only by random letters (“apkbaixar” and “apkdescargar”) and the “.com” generic top-level domain (“gTLD”). Additionally, Respondent’s <androidapktelecharger.com> domain name is also confusingly similar to Complainant’s ANDROID mark as it merely adds a generic and/or descriptive term “charger” and the “.com” gTLD.
Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its ANDROID mark in any manner. Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names 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 disputed domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it passes off as Complainant in order to directly compete. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the ANDROID mark.
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 ANDROID trademark.
Respondent uses the domain names to address a website featuring Complainant’s ANDROID mark and offering 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 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). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent forms each at-issue domain name starting with Complainant’s entire ANDROID trademark. Rx then adds the suggestive term “apk” –which is the common file extension for Android applications, and either “biaxar” or “des cargar” (each loosely meaning “to download” in Portuguese/Spanish), or the descriptive term “telecharger.” In each case the resulting string is suffixed with the top-level domain name “.com.” The ensuing differences between Complainant’s trademark and each of the at-issue domain names are insufficient to distinguish either of the domain names from Complainant’s trademark for the purposes of the Policy. In fact, while the presence of Complainant’s famous trademark alone in each domain name is sufficient to find confusingly similarity, Respondent’s inclusion of suggestive terms adds to the confusion. Therefore, the Panel concludes that the <androidapkbaixar.com>, <androidapkdescargar.com>, and <androidapktelecharger.com> domain names are each confusingly similar to Complainant’s ANDROID trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s 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).
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 (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 “MAXO GROUP LTD / MAXO GROUP” as the domain names’ registrant and there is nothing in the record that otherwise shows Respondent is commonly known by either <androidapkbaixar.com>, <androidapkdescargar.com>, or <androidapktelecharger.com>. Therefore, the Panel finds that Respondent is not commonly known by either 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 <androidapkbaixar.com>, <androidapkdescargar.com>, and <androidapktelecharger.com> domain names each address a website designed to pass itself off as being sponsored by or affiliated with Complainant when in reality they are whole unauthorized. The websites (or website) offer unauthorized or infringing versions of third party mobile apps that purport to run on the Android operating system. 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 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).”).
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 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 in registering and using each of the domain names pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain names to pass itself off as Complainant so that it might trick website visitors into believing they are dealing with Complainant when they are not. Respondent ultimately uses the addressed website(s) to offer unauthorized Android apps for download. Such use of the at-issue domain names demonstrates Respondent’s bad faith registration and use of the domain names pursuant to Policy ¶ 4(b)(iv). 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).”).
Finally, Respondent registered each of the 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, from the inclusion of suggestive terms in each domain name, and from Respondent’s offering of ANDROID based products via the <androidapkbaixar.com>, <androidapkdescargar.com>, and <androidapktelecharger.com> website(s). Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <androidapkbaixar.com>, <androidapkdescargar.com>, and <androidapktelecharger.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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <androidapkbaixar.com>, <androidapkdescargar.com>, and <androidapktelecharger.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 6, 2019
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