Google Inc. v. Private Person / Andrey Skorodubov
Claim Number: FA1306001506184
Complainant is Google Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Private Person / Andrey Skorodubov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <play-android-markt.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2013; the National Arbitration Forum received payment on June 24, 2013.
On June 22, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <play-android-markt.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 June 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2013 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 email@example.com. Also on June 28, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
Complainant asserts trademark rights in ANDROID, ANDROID MARKET and GOOGLE PLAY alleges that the disputed domain name is confusingly similar to all three of those alleged trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark ANDROID in relation to a mobile communications platform since 2007.
2. Complainant owns Russian Trademark Regn. No. 375,862, registered November 12, 2007 for the word mark ANDROID.
3. Since 2008 Complainant has used the term ANDROID MARKET in connection with a forum and, later, an online store, where third party applications based on the ANDROID platform could be discussed and purchased.
4. In 2012 Complainant renamed its ANDROID MARKET facility, GOOGLE PLAY.
5. The disputed domain name was registered on November 6, 2012.
6. The domain name resolves to a Russian language website that copies the appearance, layout, and design of the “ANDROID Apps” market.
7. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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(e), 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 (Nat. Arb. 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).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its trademark registration in Russia, the Panel is satisfied that it has trademark rights in ANDROID (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Complainant also asserts trademark rights in ANDROID MARKET and GOOGLE PLAY. There are no registrations for those alleged trademarks. There are pending applications for GOOGLE PLAY but a pending trademark application does not, of itself, create trademark rights. Complainant thus needs to show common law trademark rights in those terms. In that respect Panel notes that Complaint only moved to use of the term GOOGLE PLAY in 2012. Whilst there might be an open question as to whether use for less than 12 months is sufficient to establish unregistered trademark rights, there is in this case no need for Panel to further explore that issue since Panel finds no sustainable argument that the domain name is confusingly similar to the alleged trademark GOOGLE PLAY.
As far as the alleged trademark ANDROID MARKET is concerned, the Complaint carries more than sufficient evidence to show that those words has assumed trademark significance and had the requisite secondary meaning by the time the disputed domain name was registered.
Panel therefore finds that Complainant has established trademark rights in ANDROID and ANDROID MARKET.
The remaining question is whether, stripped of the non-distinctive gTLD, the domain name is confusingly similar to those trademarks (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Panel finds that it more likely than not that the term PLAY-ANDROID-MARKT would be perceived as a misspelling or deliberate shortening of the trademark ANDROID MARKET, in combination with a word (PLAY) which is purely descriptive when used with that trademark.
Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “Private Person / Andrey Skorodubov” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain name resolves to a Russian language website that mimics, to a degree, the appearance, layout, and design of the “ANDROID Apps” market for GOOGLE PLAY. Complainant alleges that the website uses the GOOGLE PLAY name and offers games and applications for download in the same manner that games and applications are offered for download from one of Complainant’s websites.
Complainant makes additional claims including assertions that the games offered at the resolving website have been pirated from the GOOGLE PLAY store and that the primary purpose of the resolving website is to phish for personal information from internet users.
Whether those additional claims are true or not does not require investigation. Panel is satisfied that there is no connection between the parties and that Complainant has not authorized Respondent to use its trademarks. Accordingly, the use of the domain name is not bona fide.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that prima facie case is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.’
There is no unequivocal evidence that supports the allegation that the games and applications offered at the resolving website have been pirated from the GOOGLE PLAY store.
In addition to the claims already made by Complainant, bad faith is alleged based on the accusation that Respondent is disrupting Complainant’s business by offering for free an application that is ordinarily sold at the GOOGLE PLAY store. Were that true, the action would in no way be proof of bad faith. It is a simple matter of free competition should Respondent wish to act in that manner. What is improper, however, is use of Complainant’s trademarks without its consent in a manner which is both deceptive and competitive with Complainant’s commercial interests.
Panel accepts as true Complainant’s submission that the resolving website mimics Complainant’s relevant website in a way likely to create the impression that the resolving website is sponsored by or affiliated with Complainant.
Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark. The resolving website is commercial and exists for gain. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.
Were it necessary to do so, Panel would also find both registration in bad faith in knowledge of Complainant’s rights and later use of the domain name in bad faith (see Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. 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”).
Panel finds that Complainant has satisfied the third and final limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <play-android-markt.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 28, 2013
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