Google LLC v. Marcelo Gonzalez / Lionel San Martin
Claim Number: FA1902001831623
Complainant is Google LLC (“Complainant”), represented by Aimee R. Gibbs of Dickinson Wright PLLC, Ann Arbor, Michigan, USA. Respondent is Marcelo Gonzalez / Lionel San Martin (“Respondent”), Buenos Aires, Argentina.
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names are <telechargerplaystore.com> and <playstoretelecharger.net>, registered with GoDaddy.com, LLC and NameCheap, Inc, respectively.
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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2019; the Forum received payment on February 26, 2019.
On February 28, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <telechargerplaystore.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. On February 28, 2019 NameCheap, Inc. confirmed by e-mail to the Forum that the <playstoretelecharger.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, LLC and NameCheap, Inc. have verified that Respondent is bound by the GoDaddy.com, LLC and NameCheap, Inc. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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.com and postmaster@playstoretelecharger.net. Also on March 8, 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.
A timely Response was received and determined to be complete on April 22, 2019.
On April 25, 2019, Complainant filed an Additional Submission in a timely manner according to the Forum’s Supplemental Rule #7.
On April 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
a. Complainant is one of the largest, most highly recognized, and widely used Internet search services in the world.
b. Complainant mainly operates at the domain name <google.com>.
c. Besides <google.com>, Complainant operates over 180 domain names, including <play.google.com/store>.
d. Complainant has rights in the trademark GOOGLE PLAY mark through its registrations in Argentina, since 2012, Registration No. 2611053 to identify services of international class 35, Registration No. 2611070 to identify goods of international class 9; in Colombia, since 2013, Registration No. 478199 to identify services of international class 35, Registration No. 469879 to identify goods of international class 9; in Mexico, since 2013, Registration No. 1369333 to identify services of international class 35, Registration No. 1371592 to identify goods of international class 9. Annex 9.
e. Complainant uses its trademark GOOGLE PLAY in connection with an online store that enables users to browse, purchase and download a wide range of digital content, including music, books, magazines, movies, TV shows, mobile applications, and games.
f. Complainant and consumers use and recognize the trademark PLAY STORE as a reference to Complainant’s Google Play Store which is the online store associated with Complainant’s GOOGLE PLAY goods and services.
g. Respondent’s disputed domain names <telechargerplaystore.com> and <playstoretelecharger.net> are confusingly similar to Complainant’s trademarks as they each use the trademark PLAY STORE and add the descriptive, non-distinctive term “telecharger,” a French word for “download,” along with the “.com” or “.net” generic top-level domain (“gTLD”).
h. Respondent has no rights or legitimate interests in the disputed domain names <telechargerplaystore.com> and <playstoretelecharger.net>.
i. Respondent knew or should have known of the existence and use of the trademarks GOOGLE PLAY and PLAY STORE, when including them within the disputed domain names.
j. Respondent was not authorized by Complainant to use the trademarks GOOGLE PLAY and / or PLAY STORE within his domain names.
k. Neither Respondent nor the services offered by Respondent on the website to which the disputed domain names resolved are affiliated with, associated with, or otherwise endorsed by Complainant.
l. Respondent is not commonly known by the disputed domain names.
m. Complainant has not authorized, licensed, or otherwise permitted Respondent to use its trademarks within the website to which the disputed domain names resolved.
n. Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names in connection with a website that gives the false impression that users have reached Complainant’s own website while purporting to offer competing software installation and updates related to Complainant’s products and services.
o. Further, upon information and belief, the software offered for download at the disputed domain names are actually malware.
p. Respondent registered and uses the disputed domain names <telechargerplaystore.com> and <playstoretelecharger.net> in bad faith.
q. Respondent uses the confusingly similar domain names in connection with a competing website designed to give Internet users the false impression that they have reached a Complainant-affiliated website, disrupting Complainant’s business for Respondent’s commercial gain.
r. Further, Respondent had actual knowledge of Complainant’s rights in the trademarks GOOGLE PLAY and PLAY STORE at the time it registered the disputed domain names.
B. Respondent
a. The disputed domain names are not confusingly similar to the trademark GOOGLE PLAY and are not intended to confuse Internet users.
b. The use of the website is to host the software known as GOOGLE PLAY STORE.
c. Respondent has rights and legitimate interests in the disputed domain names as Respondent is providing a service to the community explaining how to install Complainant’s GOOGLE PLAY product.
d. Respondent does not use the domain names in bad faith. Rather, Respondent uses the disputed domain names to inform users of Complainant’s GOOGLE PLAY product, and is not affiliated with malware.
C. Additional Submissions
a. Respondent chose the trademark PLAY STORE as a deliberate and direct reference to Complainant’s goods and services, and merely combined the wording with the non-distinctive verb “telecharger” which translate download.
b. Respondent accepts to distribute a version of the GOOGLE PLAY STORE application that does not longer exists, which is an illegitimate and unauthorize version. Thus, the unauthorize use of Complainant’s software amounts to bad faith registration and use.
c. The use of confusingly similar domain names to facilitate the distribution of unauthorized software is impermissible, constitutes bad faith use, and would not give rise to rights or legitimate interests in the disputed domain names.
d. Respondent deliberately seeks to confuse Internet users by making the website resolving from the disputed domain names mimic the look and feel of a Complainant’s website, particularly by making pervasive use of Complainant’s trademarks on his website.
1. Among several others around the world, Complainant owns the trademark GOOGLE PLAY in Argentina, since 2012, Registration No. 2611053 to identify services of international class 35, Registration No. 2611070 to identify goods of international class 9; in Colombia, since 2013, Registration No. 478199 to identify services of international class 35, Registration No. 469879 to identify goods of international class 9; in Mexico, since 2013, Registration No. 1369333 to identify services of international class 35, Registration No. 1371592 to identify goods of international class 9.
2. Complainant owns the trademark PLAY STORE in the United States of America through common law rights since at least 2009, that is, before the disputed domain names were registered by Respondent.
3. Respondent knew or should have known of Complainant’s trademarks GOOGLE PLAY and PLAY STORE since Complainant is known worldwide, yet Respondent incorporated said trademarks in the disputed domain names. Thus, Respondent used the trademarks GOOGLE PLAY and PLAY STORE to create a likelihood of confusion aimed to divert consumers to Respondent’s offered services.
4. Respondent has never been commonly known by the disputed domain names or the trademarks GOOGLE PLAY and PLAY STORE.
5. Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademarks GOOGLE PLAY and/or PLAY STORE, nor is Respondent an authorized supplier of Complainant’s services or software.
6. Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services.
7. Respondent has the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark due to the services offered in its website.
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.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all, the Panel will decide on the preliminary issue concerning multiple respondents. Secondly, the Panel will determine whether or not the disputed domain names are identical or confusingly similar to the mark in which Complainant has rights. Thirdly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain names; and finally, the Panel will establish whether or not the disputed domain names have been registered and are being used in bad faith by Respondent.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In this proceeding, Complainant has alleged that the entities which control the domain name(s) at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
It is the Panel belief that the disputed domain names are effectively controlled by the same person and/or entity, which is operating under several aliases.
In effect, the Panel agrees with Complainant’s arguments and has personally verified them. Hence, despite of having different names as registrants, the Panel considers that both disputed domain names correspond to one holder, based on the following facts:
(1) The <telechargerplaystore.com> domain name redirects users to the <playstoretelecharger.net> domain name.
This allows the Panel to conclude that the websites to which the disputed domain names resolve are subject to common control, as both domain names share the same website[i].
(2) Both domain names use the same email address for admin and tech contact information.
The Panel draws from the above, that the same individual or entity is controlling both disputed domain names[ii].
(3) The registrants of the domain names reside in Caba, Buenos Aires, Argentina.
The shared place of residence of the registrant information, is an indicium of a common factor between the disputed domain names.
(4) Each domain name utilizes a similar structure, namely incorporating both the terms “play store” and “telecharger”.
From the above, the Panel concludes that the disputed domain names are connected given the common structure they both share[iii].
(5) In his response, Respondent referred to both domain names without clarification of any kind.
The aforementioned fact allows the Panel to believe that the disputed domain names are subject to the common ownership or control of Lionel San Martin. The Panel finds such common control sufficient to justify consolidation of the Complainant's claims against the Respondents in this proceeding[iv].
Consequently, the Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity. For these reasons, the Panel agrees to the consolidation of the Complaint in relation to each of the disputed domain names.
Complainant contends to be the owner of the trademarks GOOGLE PLAY and PLAY STORE to identify goods and services of international class 9 and 35 respectively, for the offering and promoting an online retail store for purchasing and downloading digital content.
a) Existence of a trademark or service mark in which the Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[v] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the trademark GOOGLE PLAY by means of the numerous registrations around the world and in the trademark PLAY STORE by means of common law rights.
The common law rights are duly demonstrated by means of the following evidence among other filed with the Complaint:
· Annex 6 to the Complaint shows the content of the website play.google.com/store, which provides the information concerning the worldwide reach of the trademark and the continuous use given to the trademark PLAY STORE.
· Annex 7 to the Complaint corresponds to a third’s party analysis of GOOGLE’s PLAY STORE and the number of available apps throughout the years. The main information drawn from this Annex is the following:
o GOOGLE’s PLAY STORE has been available and known to the public since 2009.
o By 2012, the number of apps available were more than 500.000 which is a considerable amount.
o The number of apps available has increased exponentially.
o By 2013, the number of apps available were around 1.000.000.
o By 2015, the number of apps available were around 1.500.000.
o By 2016, the number of apps available were around 2.000.000.
o By 2017, the number of apps available were around 3.500.000.
o In 2010, around 1 billion apps were downloaded from GOOGLE’s PLAY STORE.
o In 2011, about 10 billion apps were downloaded from GOOGLE’s PLAY STORE.
o In 2012, approximately 25 billion apps were downloaded from GOOGLE’s PLAY STORE.
o In 2013, around 50 billion apps were downloaded from GOOGLE’s PLAY STORE.
o In 2016, about 65 billion apps were downloaded from GOOGLE’s PLAY STORE.
· Annex 8 shows how every device running Complainant’s Android operating system has the trademark PLAY STORE with its corresponding logo. It also shows the connection for consumers between the trademarks GOOGLE PLAY and PLAY STORE, which is reflected in a very high search engine optimization.
The aforementioned evidence is sufficient to demonstrate common law rights regarding the trademark PLAY STORE since 2009. As it is clear and uncontested that the trademark PLAY STORE is indeed distinctive and that it has been greatly recognized by consumers and app providers.
Moreover, Annex 9 to the Complaint includes the GOOGLE PLAY trademark registrations and applications. The most relevant ones given the geographical location of Respondent, are the following:
· Argentinian Registration No. 2611053 issued in 2012, for services of international class 35.
· Argentinian Registration No. 2611070 issued in 2012, for services of international class 9.
· Colombian Registration No. 478199 issued in 2013, for services of international class 35.
· Colombian Registration No. 469879 issued in 2013, for services of international class 9.
· Mexican Registration No. 1369333 issued in 2013, for services of international class 35.
· Mexican Registration No. 1371592 issued in 2013, for services of international class 9.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited mark and the exclusive right to use them in connection with the stated services. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[vi].
Thus, Complainant established its rights in the trademark GOOGLE PLAY since at least 2012[vii] and in the trademark PLAY STORE since at least 2009.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademarks GOOGLE PLAY and PLAY STORE for purposes of Paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark
Complainant alleges that Respondent’s disputed domain names are confusingly similar to Complainant’s trademarks as they each use the trademark PLAY STORE and add the descriptive, non-distinctive term “telecharger,” a French word for “download,” along with the “.com” or “.net” generic top-level domain (“gTLD”).
In the first place, before establishing whether or not the disputed domain names <telechargerplaystore.com> and <playstoretelecharger.net> are confusingly similar to Complainant’s trademarks GOOGLE PLAY and PLAY STORE, the Panel wants to point out that the addition of generic top-level domain (gTLD), i.e., “.com,” “.net,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[viii] as the insertion of a gTLD has a distinctive function[ix].
UDRP Panels have unanimously accepted that the inclusion of the “.com” and “.net” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
Furthermore, the Panel considers that the reproduction of the trademark PLAY STORE, by the disputed domain names, is sufficient ground to establish that the disputed domain names are confusingly similar to the trademark[x]. Especially since the disputed domain names reproduce entirely Complainant’s trademark PLAY STORE without any other distinctive elements.
In fact, the word “telecharger”, does not add any distinctiveness as it translates “download” which is the service offered within the website to which the disputed domain names resolve.
Consequently, consumers will assume that the owner of the disputed domain names is the owner of the trademark.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain names are confusingly similar to Complainant’s mark and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[xi].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[xii]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names <telechargerplaystore.com> and <playstoretelecharger.net> because of the following: i) Respondent knew or should have known of the existence and use of the trademarks GOOGLE PLAY and PLAY STORE, when including them within the disputed domain names; ii) Respondent was not authorized by Complainant to use the trademarks GOOGLE PLAY and / or PLAY STORE within his domain names; iii) Neither Respondent nor the services offered by Respondent on the website to which the disputed domain names resolved are affiliated with, associated with, or otherwise endorsed by Complainant; iv) Respondent is not commonly known by the disputed domain names; v) Complainant has not authorized, licensed, or otherwise permitted Respondent to use its trademarks within the website to which the disputed domain names resolved; vi) Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names in connection with a website that gives the false impression that users have reached Complainant’s own website while purporting to offer competing software installation and updates related to Complainant’s products and services; and v) Upon Complainant’s information and belief, the software offered for download at the disputed domain names are actually malware.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent states that, Respondent has rights and legitimate interests in the disputed domain names as Respondent is providing a service to the community explaining how to install Complainant’s GOOGLE PLAY product
Nonetheless, the Policy is clear as to establish that the use must be in connection with a bona fide offering of goods and services. Hence, the mere use of a domain name does not indicate rights or legitimate interests. The burden is higher, said use must be done in good faith.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain names, as Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, since the disputed domain names resolve to a website that purports to provide information and software updates for Complainant’s GOOGLE PLAY STORE product and services. The website prominently displays GOOGLE PLAY, PLAY STORE, and TELECHARGER PLAY STORE imitating Complainant’s logos and font, which is directed to capitalize Complainant’s trademarks GOOGLE PLAY and PLAY STORE goodwill by attracting internet users to its disputed domain names where Respondent offers unauthorized software[xiii].
Moreover, Respondent’s website states that the “owner” of the software available for download on Respondent’s website is Complainant, misleadingly diverting consumers as to the source, sponsorship, affiliation, or endorsement.
Finally, Complainant has never authorized Respondent to distribute the GOOGLE PLAY STORE software.
Furthermore, Respondent never explained the reason for choosing the expression PLAY STORE to be part of its domain names, when it is obvious from the Response, that Respondent has never been commonly known by the disputed domain names as an individual, business or organization.
Consequently, Respondent knew or should have known of Complainant’s trademarks GOOGLE PLAY and PLAY STORE since Complainant’s trademarks are included in the resolving website. Yet Respondent incorporated said trademarks in the disputed domain names. Thus, Respondent used the trademarks GOOGLE PLAY and PLAY STORE to create a likelihood of confusion aimed to divert consumers to Respondent’s offered services.
Therefore, the second requirement of paragraph 4(b) of the Policy is met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
This Panel deems that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith[xiv]. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
Moreover, since Complainant’s trademarks are used in the disputed domain names “it is reasonable to conclude that many Internet users would suppose that the website, to which the disputed domain name resolves, has a connection with the Complainant”[xv]. This conclusion might disrupt Complainant’s business, especially since Respondent accepts to distribute a version of the GOOGLE PLAY STORE application that does not longer exists, which is an illegitimate and unauthorize version. Thus, the unauthorize use of Complainant’s software amounts to bad faith registration and use. In fact, the services described in Respondent’s response take advantage of the services provided by Complainant.
Respondent’s use falsely suggests sponsorship and/or endorsement by Complainant of Respondent’s website and use of the disputed domain names.
Hence, Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor and it is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Furthermore, Respondent is profiting from its use of the trademarks GOOGLE PLAY and PLAY STORE in the disputed domain names by attracting Internet users to the resolving website. Respondent has created confusion as to Complainant’s affiliation or sponsorship of the disputed domain names and website in order to distribute unauthorized software. This is indicative of bad faith under Policy ¶ 4(b)(iv)[xvi].
Therefore, the three elements of the Policy 4(a) are satisfied in the present case in respect to Respondent of the disputed domain names.
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.com> and <playstoretelecharger.net> domain names be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq, Panelist
Dated: May 9, 2019
[i] See F. Hoffmann-La Roche AG v. Binero AB, Netfirms AB / Igor Ivanov, Binero AB, Netfirms AB / Tigran Mosisyan, Private Person, Kseniya S Dzhabbarova, Kseniya Dzhabbarova, Wuxi Yilian LLC / Alexis Uvarovis, Flee Ventures 4, Vladimir Kiskov, Konayem Temirtassova, Kravtsov Alexander, Alexander Kravtsov, Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Danilo Krasko, D2016-0517 (WIPO May 13, 2016).
[ii] See Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, D2016-0461 (WIPO April 28, 2016).
[iii] See Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, D2016-0461 (WIPO April 28, 2016).
[iv] See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, D2010-0281 (WIPO May 18, 2010).
[v] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).
[vi] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[vii] See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Forum November 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Forum August 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[viii] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[ix] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Forum July 15, 2011).
[x] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[xi] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[xii] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
[xiii] See Alcon, Inc. v. ARanked, FA 1306493 (Forum March 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).”).
[xiv] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, D2012-0474 (WIPO April 24, 2012).
[xv] See Forest Labs., Inc. v. candrug, D2008-0382 (WIPO April 24, 2008)
[xvi] See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO August 17, 2000).
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