WIPO Domain Name Dispute: Case No.DAU2012-0026

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Dec 14, 2013 (3 years and 6 months ago)

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ARBITRATION

AND

MEDIATION CENTER





ADMINISTRATIVE PANEL DECISION

Google Inc. v. Q Interactive Pty Ltd / Mr. Victor Quinteros

Case No. DAU2012
-
0026






1.
The Parties


The Complainant is Google Inc.

of California,
United States of America
,

repres
ented by Gilbert & Tobin
Lawyers, Australia.


The Respondent is Q Interactive Pty Ltd / Mr. Victor Quinteros

of
N
ew
S
outh
W
ales
, Australia
, represented
by Therese Catanzariti, Barrister,
Australia
.



2.
The Domain Name and Registrar


The disputed domain n
ame <androidappsstore.com.au> is registered with TPP Wholesale Pty Ltd.



3.

Procedural History


The Complaint was filed with the WIPO Arbitration and Mediation Center

(the “Center”) on
October 18, 2012.
On October 18, 2012,
the Center transmitted by emai
l to
TPP Wholesale Pty Ltd
a request for registrar
verification in connection with the d
isputed domain name. On
October 19, 2012
,
TPP Wholesale Pty Ltd

transmitted by email to the Center its verification response
confirming that the Respondent is listed a
s the
registrant and providing the contact details
.


The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy
(the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supp
lemental Rules
for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).


In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings c
ommenced on
October 30, 201
2.
In accordance with the Rules, paragraph
5(a), the du
e date for Response was
November 19, 2012
.
An email communication was received from the
Respondent by the Center on November 12, 2012.
The
complete
Response was f
iled with the C
enter on
November 19,
2012
.

On November 20, 201
2, the Complainant submitted a supplemental f
iling in
reply

to the
Respondent’s response.

On November 21, 2012, the Respondent transmitted by email to the Center its
objection to the Complainant being given leave to file further
submissions.

On November 21, 2012, t
he
Center
informed both parties that it
is

in the sole discretion of

the Panel

to determine

whether to
consider
and/or
admit the Complainant’s supplemental filing.


page
2


Th
e Center appointed
Andrew F
.

Christie
as the sol
e pa
nelist in this matter on
December 3, 2012.
The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rul
es, paragraph 7.


On December 18,

2012, the Panel issued Administrative Panel Procedural Order No. 1 (
the

Procedural
Order No. 1

), in which the Panel: (i) admitted into the case record the Complainant’s
unsolicited
supplemental filing
; (ii) invited the

Respondent to file a supplemental submission addressing the
Complainant’s assertion in its supplemental submission that the Respondent’s use of the ANDROID
trademark in the disputed domain name is not a legitimate descriptive use, and explain
ing

the manne
r in
which the Respondent derives revenue from the website to which the disputed domain name resolves; and
(iii) extended the due date for rendering a decision. On
January 4 and 7, 2013, the Respondent filed
supplemental submissions in accordance with Pr
ocedural Order No. 1.



4.

Factual Background


The Complainant, Google Inc
.
, is a Delaware corporation founded in 1998. It is renowned for its search
engine services offered under the GOOGLE trademark, and also offers a broad variety of related
technologi
cal and mobile products and services. Since 2007 the Complainant has offered
, under the
ANDROID trademark,

a software platform and operating system

(hereafter
referred to as “
the
Android
p
latform”
). The Android p
latform

is an open source develop
ment plat
form that allows third
-
party developers
to create applications for a variety of computing environments.

From
October 2008 to March 2012, the
Complainant used the trademark
ANDROID MARKET
for an online marketplace through which software
developers offered
and sold applications
, also known as
“apps”
,

to users of Android

p
latform
-
enabled
devices. In March 2012 the Complainant rebranded the “Android Market” as “Google Play” and increased its
offerings to include additional media and content.


The number of ap
plica
tions available on the Android
p
latform has grown
rapidly

over the past five

years.
Mobilestatistics.
com estimates that there were 600,000 applications
for the Android platform
available on
Google Play as of June 2012.


The Complainant owns many
regi
strations for the
trademark
ANDROID
throughout the world
,

dating

from at
least as early as 2007. The ANDROID trademark was first registered

in Australia
on
November 5, 2007

in
class 9 for computer hardware and computer software
, and

has been in continuous

use
in Australia
since at
least 2008.


The disputed domain name

was registered on May 24, 2011. It currently resolves to a website that

uses the
ANDROID

trademark within its banner, in the title of the website, and in various parts of pages of the
websit
e. The

website is used to distribute

applications develop
ed for the Android p
latform, and to display

advertising. Followi
ng a letter

of demand
sent by the Complainant to the Respondent on May 30, 2012, the
website was modified to include a
disclaimer

sta
ting



Android Apps Store


is an independent Australian site
and is not an official Google site or Android site. Android Apps Store is not in any way sponsored, approved,
authorised or affiliated with Google Inc or with Android

.



5.
Parties’ Contentions


A. Complainant


The Complainant contends that the disputed domain name is identical or confusingly similar to its ANDROID
trademark because it incorporates it in its entirety. The Respondent does not avoid likely confusion by
adding the descriptive and n
on
-
distinctive terms “apps store”, par
ticularly as it describes an on
line store
where “apps” or applications can be purchased
. “Android” is the dominant portion of the disputed domain
name and the fame of the distinctive ANDROID
trade
mark will cause users

encountering the disputed
page
3


domain name to mistakenly believe it originates from, is associated with, or is sponsored by the
Complainant. The country code suffixes are inconsequential and
should

be disregarded.


The Complainant
makes many contention
s that
the Respondent has no rights or legitimate interests in
the
disputed domain name including
: (i) the Respondent is undoubtedly familiar with the ANDROID
trade
mark
because the website to which the disputed domain name resolves

prominently feat
ures the “Andr
oid Robot”
logo
, and markets applic
ations specific to the Android p
latform, most of which are
also
offered through
Google Play; (ii) the website to which the disputed domain name resolves offers products and services in
direct competition with those offer
ed by the Complainant under its ANDROID trademark, and this is not a
bona fide

or legitimate noncommercial or fair use; (iii)
the Respondent has intentionally adopted the
Complainant’s well
-
known
ANDROID trademark as part of the disputed

domain name in or
der to trade off the
Complainant’s reputation
, which is not a
bona fide

use
;

(
i
v
) the Complainant has not authorized or licensed
the Respondent to use or register the ANDROID trademark as part of the disputed domain name
, which is
strong evi
dence that the

Respondent
has n
o

rights or legitimate interests in the disputed domain name;
(v
)
by using the ANDROID trademark in the disputed domain name and as the brand name for its app store, the
Respondent is not making nominative or descriptive fair use of the A
NDROID trademark

because the overall
get up of
the
Respondent’s website and its failure to adequately identify itself as the operator of the website
evidences the Respondent’s use of the ANDROID trademark for its trademark value and not for any
descriptive

value
;

(vi)
the Respondent is not commonly known by the disputed domain name or any name
conta
ining the ANDROID trademark;
and
(vii
) the website to which the disputed domain name resolves is
used to compete with the Complainant’s own application marketp
lace and to generate revenue through
advertising
,

which is not a legitimate noncommercial use of the disputed domain name
.



The Complainant contends that the disputed domain name was registered and is being used in bad faith
because: (i) the fame and un
ique qua
lities of the ANDROID trademark
,

which
was

adopted by the
Complainant years prior to the registration of the disputed domain name
,

make it extremely unlikely that the
Respondent created
the disputed domain name
independently; (ii) the Respondent u
ses the disputed
domain name to resolve to a website from which it offers for sale,

and presumably sells, Android p
latform
applications competing with the Complainant’s applications offered under the ANDROID trademark and with
the Complainant’s retail serv
ices for those applications; (iii)

the website to which the disputed domain name
resolves is titled “Android Apps Store/Android Market Australia


which
is clearly taking advantage of the
Complainant’s reputation in the ANDROID trademark and its formerly t
itled “Android Market”
retail platform
,
and misrepresent
s

itself as an Australian version of its retail platform

for Android applications; (iv
)

the
Respondent’s use of the Complainant’s ANDROID
trademark is likely to mislead
or deceive consumers into
thin
king the Respondent is affiliat
ed with the Complainant; and (
v) following a letter of demand from the
Complainant on May 30,

2012, the Respondent added a disclaimer on the website to which th
e disputed
domain name resolves
;

however this is in fine print
and does not diminish the likelihood of confusion arising
from the prominent use of the ANDROID trademark in the banner and title of that website, the use of the
“Android Robot” logo
,

and
the
other similarities

in the site’s get up
.


B. Respondent


The Res
pondent made the following contentions: (i) that the Complainant applied for a tradema
rk in
Australia for ANDROID in c
lass 35, online retail services, on October 31, 2011,
(following an earlier
application in Argentina on May 9,

2011)
well after the Respo
ndent registered the disputed domain name
;
(ii) the Respondent has developed a
bona fide

business through the disputed domain name
,

offering genuine
Android applications created and supplied by third parties; (iii) the Complainant only notified the Respo
ndent
of its
concerns regarding the disputed domain name

on May 30, 2012, more than a year after the
Respondent registered the disputed domain name and developed its business; (iv)
the website to which the
disputed domain name resolves contains prominent
disclaimers making clear that it is not associated with
the Complainant, and the use of the “Android Robot” logo is in accordance with the Complainant’s creative
common
s trademark licens
e; (v) the phrase “Android Apps” has become descriptive
,

being used
t
o describe
applications that operate on the Android mobile phone operating system;


(vi) the Respondent did not
register the disputed domain name to disrupt the Complainant’s business and the Complainant can, and
does, use the ANDROID trade
mark in a domain

name offering

Android applications;

(vii) the Complainant
page
4


supplies the Android operating system (on open source terms), and the Respondent is only providing
Android applications which third parties

are
able to do
;

(vii
i
) there are other domain names not

associated
with the Complainant that use the word “android” and which offer Android applications
; and (xi
) this case is
squarely within the parameters of the UDRP decision
Oki Data Americas, Inc. v. ASD
, WIPO Case No.
D2001
-
0903
.


C.
Complainant


supple
mental f
iling


The Complainant submitted to the Center on November 20, 2012,
a supplemental f
iling
containing
statements
refuting many of the Respondent’s contentions
,

including

statements to the effect that
: (i)
the
Respondent does not satisfy the four e
lements of
the
Oki Data

case
as it is not a genuine or licensed reseller
of the Complainant’s goods and services
, it does not sell ANDROID trademarked goods sourced from the
Complainant, the disclaimer added to the Respondent’s website is inadequate and do
es not address the
initial interest confusion arising from the disputed domain name and website title, and, having failed to meet
the first three grounds
,

the fourth one is not relevant to the Complaint; (ii)
the Complainant can claim priority
of rights f
rom an overseas trademark application filed within six months of the filing
of the overseas
application; (iii)

the Respondent has not denied awareness of the Complainant’s ANDROID trademark and
operating system at the time it registered the dispute
d domai
n name; (iv
) the defenc
e

of laches does not
apply as a

bar to proceedings under the UDRP
; (v
) the Respondent’s website traffic data indicates the
extent of initial
interest confusion of consumers

and
,

in any case,
is inconsistent with the claimed website

traffic data
appearing
on the website to which the disputed domain name resolves; (v
i
) the trademark
ANDROID is not descriptive of applications
that operate on the Android p
latform, and although the trademark
ANDROID has a se
condary meaning (the Android
p
latform) that secondary meaning is derived from and
inextricably linked to the Complainant’s use of the ANDROID trademark; and

(vi
i
) the other domain names
identified by the Respondent that contain the word “android” have no bearing on this Complaint.


D
. Respondent


supplemental filing


On January 4, 2013,

the Respondent filed a supplemental submission contending: (i) Android applications
are their own distinct genus, or family of products, and that the phrase “android apps” is descriptive of all
Andro
id applications
; (ii
) the word “Android” does not have any secondary meaning

derived from the
Complainant

s use of the ANDROID trademark, because the word “
A
ndroid


is not used exclusively by the
Complainant, the Complainant’s consumer
-
facing use of the w
ord is relatively limited, the word is used
extensively by third parties descriptively to describe goods and services that are not associated with the
Complainant, and even if the word has secondary meaning the Respondent’s desc
riptive use of it cannot be
restrained
; (iii)
the Respondent’s use of the word “Android” is a legitimate descriptive use, because the
Respondent is genuinely offering applications for mobile devices that run, operate and interact with the
Android software stack; (iv) there is no in
itial interest confusion because a visitor to the website to which the
disputed domain na
me resolves gets what they want


namely,

legally downloadable Android apps; (v) by
bringing this Complaint the Complainant is attempting to restrict or control the R
espondent’s innovation,
thereby creating a closed ecosystem and restricting freedom and choice.


On January 7, 2013, the Respondent filed a supplemental submission stating that the website to which the
disputed domain name resolves provides Android applic
ations both for free and for a fee. With respect to
applications provided for a fee, the application developer pays a percentage of the sale to the Respondent
whenever a visitor to the website downloads a
for
-
fee application.


T
he Respondent’s supplementa
l
submission
made

no mention
of
the generation of

revenue from advertising

on the website
.



6.
Discussion and Findings


A.
Identical or Confusingly Similar


The disputed domain name incorporates the whole of the Complainant’s registered trademark ANDROI
D,
with the addition of the
words

“apps
” and “
store”
,

and the cc
TLD identifier “.com.au”. This Panel finds the
page
5


addition of
the words “apps” and “store”

does not lessen the inevitable confusion of the disputed domain
name with the Complainant’s trademark.

This is especially so given that the Complainant sells
applications,
commonly known as
“apps”
, in an

on
line

store
.

Accordingly, this Panel finds that the disputed domain name
is confusingly similar to a trademark in which the Complainant has rights.


B
.

Rights or Legitimate Interests


(i) Descriptive fair use principles


The Respondent has asserted that it has right
s

or legitimate interest
s

in the disputed domain name on the
ground that the disputed domain name describes the activities of the Respondent a
t the website to which it
resolves


namely, an online store for a
pps for the Android p
latform.

In
support of its claim

on this point
, the
Respondent cited
Oki Data Americas, Inc. v. ASD, Inc.
, WIPO Case No. D2001
-
0903 (hereafter ‘
Oki Data
’),
which sets o
ut principles
for
determining when a reseller or distributor is making a
bona fide

offering of goods
and services
,

and thus has a legitimate interest in the domain name
, for the purposes of the
Uniform Domain
Name Dispute Resolution Policy (hereafter refer
red to as the “UDRP”)
.


Although this Panel accepts that the
Oki Data

principles
developed for the purposes of the UDRP
are
relevant to determination
of

the equivalent issue under the
Policy, in

this
Panel’s view

the Respondent’s
reliance on
Oki Data

in
this
particular
case
is inapt. The Respondent
is
neither
reselling

or distributing
goods
or services supplied by the Complainant under

the

ANDROID

trademark
,

nor
providing services that are
sufficiently analogous thereto (such as
was the situation
in
GM H
olden Ltd v. Publishing Australia Pty Ltd
,
WIPO Case No. DAU2011
-
0002).

That is to say, the role of the Respo
ndent in this case is not one of
reselling or distributing

goods or services bearing the Complainant’s tr
ademark
;

rather, it is one of
distributi
ng

goods or services (in this case,
apps
) that
are interoperable

with
other
goods or services (
in this
case,
the Android platform
) that bear

the Complainant
’s

trademark. In this Panel’s view, the provision of a
second product that interoperates with a fir
st product is a scenario different from the reselling
or distribution
of a first product
, and so

the
Oki Data

principles are
not the ones most appropriate

to
the circumstances of
this case.


This Panel recognizes that in the situation where
a

r
espondent is

offering for sale goods or services that are
interoperable with other g
oods or services that bear the c
omplainant’s trademark (hereafter
referred to as the

in
teroperability situation”
) the r
espondent has a legitimate interest in describing
its goods or s
ervices
accurately, and

that
this

legitimate interest
will

extend to the use of a

domain name that contains the
c
omplainant’s trademark

so long as that use is
descriptive and fair (hereafter referred to as
“descriptive fair
use”
)
.
In
this Panel’s opinion,

a descriptive fair use in the interoperability situation falls within

the
circumstances specified in
paragraph 4(c)(iii) of the Policy
as demonstrating the r
espondent’s rights or
legitimate interests in the domain name


namely
,
the circumstances of

the r
espondent

making a “
fair use of
the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish”
the
c
omplainant’s trademark.



A descriptive fair use analysis requires

consideration of
two
issues
: (i) is r
espondent’s us
e of the domain
name
“descriptive

?; and (ii) i
f so, i
s
it “fair”?


The first
issue



whether

r
espondent’s
use
of the domain name
is
descriptive



requires
careful

articulation.

In general, the use of most, if not all, domain names will be descriptive

to

some degree
.

This is because

Internet users have the general expectation that a domain name provides some description of what will be
found at a
ny

website to which it resolves



f
or example, Internet users would generally expect that a domain
name contai
ning the words “apps” and “store” will resolve to a website
from

which apps are made available
for download. Because of this expectation,
a very large number of domain names contain descriptive terms
,

and are used as web addresses for websites providing t
he goods or services described by the domain name.
So, absent careful articulation of the issue, the answer to the question of whether a domain name is being
used ‘descriptively’ will
very often

be ‘yes’.



page
6


Put correctly, the question
raised by the first
issue
is not whether the
domain name as a whole

is being used
de
scriptively, but whether
a
c
omplainant’s
trademark

within the domain name

is being used descriptively.

More specifically, the c
orrect question is whether
a
r
espondent is using descriptively t
hat part of the domain
name that is identical with

or confusingly similar to
a
c
omplainant’s trademark (referred to hereafter as

the
trademark part


of the domain name
). To answer this question requires careful consideration of how the
domain name
would
be read by Internet users; and t
he answer to this question will, inevitably, turn on the
specific facts of the particular case.


Even if r
espondent’s use of the domain name is descriptive (in the sense explained above), that will not give
rise to a right

or legitimate interest in the domain name unless that use is also fair
. One instance in which
a
r
espondent’s descriptive use of the domain name will not be fair is where it is undertaken with “
intent for
commercial gain to misleadingly divert consumers o
r to tarnish”
a
c
omplainant’s trademark (this being a
requirement of paragraph 4(c)(iii) of the Policy).

No doubt there
can be

other instances in which a particular
use
, though descriptive,

is nevertheless not a fair use
, and so does not
give rise to
a
r
e
spondent having a
right or legitimate interest in the domain name
.


(ii)
Application of
the descriptive fair use
principles to this case


The

Complainant
contends that the correct
reading of the disputed domain name
in this case
is
the reading

in which t
he trademark part functions
as
a trademark

(
i.e.

as
badge of

trade

origin).
Under this contention,
the

effective

reading
of the disputed domain name i
s “Android
-
brand apps store”. The Respondent contends
that the
correct
reading of the disputed domain na
me
is
the reading

in which the trademark part functions
not
as a trademark but
as the name

of the particular
software platform on which the apps
operate
.
Under this
contention, the
effective

reading
of the disputed domain name i
s

“apps store for Android p
latform”.
While
both readings are plausible, this Panel has concluded, on
the
balance

of probabilities
, that
the
reading
more
likely to be given to the

disputed domain name by Internet users is the one for which the Complainant
contends.


Significant i
n

coming to this view

is

the fact that the trademark part of the disputed domain name
appears at
the
beginning

of the domain name
. In this Panel’s opinion,
the location of

the trademark part at the
beginning
of the disputed domain name
in this case
emphasi
zes

its trademark function

over

its
nominative

function
, and so makes it more likely
that the trademark part is
read
as a trademark rather than as a
descriptive
name
.
This is because, in this Panel’s opinion, the
word
string that most e
vokes the meaning o
f
an Android
-
brand apps store is “androidappsstore”, whereas the
word
string that most evokes the meaning
of an apps store for the Android platform would be
“appsstoreforandroid”.


This Panel notes that the website to which the disputed domain name resolve
s contains the heading
“Android
TM

apps store”.
Thus
, the Respondent has titled its

website in the very manner in which the
Complainant contends
that
the disputed domain name is to be read


namely, where the word “android”
functions as a

trademark rather
than
as a descriptive name
.

Although this fact is not determinative of the
issue, it does lend support to

the reading that this Panel considers, on balance, is the reading
more likely to
be
given to the disputed domain name by Internet users.


By adoptin
g the string
“androidappsstore”
as its domain name, the Respondent is using the Complainant’s
trademark ANDROID in its trademark sense, not in its descriptive sense. It follows that the Respondent’s
use of th
e disputed domain name is
not a descriptive use



and, so, it cannot constitute a descriptive fair use
of the type that gives rise to a right or legitimate interest in the disputed domain name.
Accordingly, this
Panel finds that the Respondent has no rights or legitimate interests in the disputed doma
in name.


C.
Registered or Subsequently Used in Bad Faith


It is clear from the evidence in the case record that the Respondent is using the disputed domain name to
attract, for commercial gain, Internet users to its website. Given the Panel
’s conclusion
s, above, that
the
disputed domain name is confusingly similar to the C
omplainant’s trademark, and that
the Respondent is
using the Complainant’s trademark in
the
disputed domain name in a trademark
sense
rather than
in a
page
7


descriptive sense
,
it follows
that

the Respondent is using the disputed domain name
to
attract, for
commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s
trademark as to the source, sponsorship, affiliation, or endorsement of that websi
te. A
ccording to paragraph
4(b)(iv) of the Policy,
this
is evidence of the registration and use of the
disputed
domain name in bad faith.


For
all of the above

reasons
, this Panel is satisfied that the disputed domain name is being used in bad faith.


D
. Complainant’s Eligibility


The Complainant has requested transf
er of the disputed domain name.
Given that the Complainant owns an

Australian registered trademark that is identical to the
first part of the
disputed domain name, the
Complainant appears to

satisfy the eligibility requirements for registration of the disputed domain name.



7.
Decision


For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the
disputed
domain name

<androidappss
tore.com.au>

be transferred to the Complainant
.





Andrew F
.

Christie

Sole Panelist

Date:
January 14
, 2013