Google LLC v. JORGE ROMAN / TZION MEDIA SLU
Claim Number: FA1902001828195
Complainant is Google LLC (“Complainant”), represented by Aimee R. Gibbs of Dickinson Wright PLLC, Michigan, USA. Respondent is JORGE ROMAN / TZION MEDIA SLU (“Respondent”), Andorra.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <telechargerplaystore.online>, registered with Uniregistrar 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2019; the Forum received payment on February 1, 2019.
On February 1, 2019, Uniregistrar Corp confirmed by e-mail to the Forum that the <telechargerplaystore.online> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar 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 February 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2019 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@telechargerplaystore.online. Also on February 11, 2019, 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 March 5, 2019, 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 offers a wide range of Internet-related products and services, including online entertainment and digital content distribution services. Complainant has rights in the GOOGLE PLAY mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,570,801, registered Sept. 25, 2018). See Compl. Annex 9. Respondent’s <telechargerplaystore.online> domain name is confusingly similar to Complainant’s GOOGLE PLAY mark as it incorporates the term “playstore,” which often refers to Complainant’s mark, along with the descriptive term “telecharger” and a “.online” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <telechargerplaystore.online> domain name. Respondent is not authorized or permitted to use Complainant’s GOOGLE PLAY mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant and offer competing software installation and update services, which is presumably malware.
Respondent registered and uses the <telechargerplaystore.online> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent offers competing software and update installation services, which is presumably malware. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the GOOGLE PLAY mark prior to registering and subsequent use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers a wide range of Internet-related products and services, including online entertainment and digital content distribution services.
2. Complainant has established its trademark rights in the GOOGLE PLAY mark through its registrations of the mark around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,570,801, registered Sept. 25, 2018).
3. Respondent registered the <telechargerplaystore.online> domain name on September 15, 2018.
4. Respondent uses the disputed domain name to pass itself off as Complainant and to offer competing software installation and update services, which is presumably malware.
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 claims rights in the GOOGLE PLAY mark based upon registration of the mark with the USPTO (e.g., Reg. No. 5,570,801, registered Sept. 25, 2018). See Compl. Annex 9. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel notes that while Complainant does not provide an exact copy of its USPTO registration, a TESS search revealed the mark was registered on September 25, 2018, after Respondent registered the disputed domain name. However, the relevant date of rights may extend back to the date of filing of a USPTO application. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”). The date of application for Complainant’s USPTO registration for the GOOGLE PLAY mark was March 5, 2012. The Panel therefore holds that Complainant’s registration of the GOOGLE PLAY mark with the USPTO is sufficient to establish rights in the 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 GOOGLE PLAY mark. Complainant argues Respondent’s <telechargerplaystore.online> domain name is confusingly similar to the GOOGLE PLAY mark, as the name incorporates a common reference to the mark, “playstore,” the descriptive term “telecharger” (French for “download”), and a “.online” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Google LLC v. Hyipp Inversiones Webmaster / Hyipp Inversiones Webmaster, S.A., FA1791842 (Forum July 13, 2018) (“the <playstoredownload.us> domain name is confusingly similar to the mark, especially in light of the evidence Complainant’s service appears on Android phones as “Play Store” (beneath Complainant’s logo) once the app is installed”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Complainant also provides a translation of the term “telecharger” in support of its contentions. See Compl. Annex 13. The Panel therefore determines the <telechargerplaystore.online> domain name is confusingly similar to the GOOGLE PLAY mark per Policy ¶ 4(a)(i).
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 GOOGLE PLAY trademark and to use it in its domain name, incorporating a common reference to the mark, “playstore,” the descriptive term “telecharger” (French for “download”), and the “.online” gTLD;
(b) Respondent registered the disputed domain name on September 15, 2018;
(c) Respondent uses the disputed domain name to pass itself off as Complainant and to offer competing software installation and update services, which is presumably malware;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <telechargerplaystore.online> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the GOOGLE PLAY mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “JORGE ROMAN / TZION MEDIA SLU,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. See Amend. Compl. Annex 14. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <telechargerplaystore.online> domain name;
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <telechargerplaystore.online> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a competing website. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Specifically, Complainant contends that the domain name resolves to a website that offers software installation and updates related to Complainant’s Google Play Store. See Compl. Annex 10. Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. Id. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <telechargerplaystore.online> domain name;
(g) Complainant argues that users who download software from the <telechargerplaystore.online> domain name are presumably susceptible to malware. Use of a disputed domain name to distribute malware does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant argues that Respondent’s website encourages users to download software that is suspicious because it prompts users to disable or circumvent security settings on their devices before downloading the software. See Compl. Annexes 6 and 10 (comparing Complainant’s installation versus Respondent’s website). Therefore, the Panel agrees with Complainant and finds that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
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’s use of the <telechargerplaystore.online> domain name to pass itself off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel notes that Complainant contends that the domain name resolves to a website that offers software installation and updates related to Complainant’s Google Play Store. See Compl. Annex 10. The Panel therefore finds Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant argues that users who download the content at the <telechargerplaystore.online> domain name are instead downloading malware. Use of a disputed domain name to distribute malware may demonstrate bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). Complainant argues that Respondent’s website encourages users to download software that is suspicious because it prompts users to disable or circumvent security settings on their devices before downloading the software. See Compl. Annexes 6 and 10 (comparing Complainant’s installation versus Respondent’s website). Therefore, the Panel finds Respondent’s use of the disputed domain name to distribute malware indicates bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant also contends that in light of the fame and notoriety of Complainant's GOOGLE PLAY mark, it is inconceivable that Respondent could have registered the <telechargerplaystore.online> domain name without actual and constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP decisions have declined to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further submits that Respondent’s use of the domain name to feature Complainant’s GOOGLE PLAY design mark in connection with competing services indicates it had actual knowledge of Complainant’s rights. The Pane agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Finally, 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 GOOGLE PLAY 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 <telechargerplaystore.online> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 6, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page