The Complainant is Google Inc. of California, United States of America, represented by Gilbert & Tobin Lawyers, Australia.
The Respondent is Q Interactive Pty Ltd / Mr. Victor Quinteros of New South Wales, Australia, represented by Therese Catanzariti, Barrister, Australia. 2. The Domain Name and Registrar
The disputed domain name 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 email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed 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 as 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 Supplemental 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 commenced on October 30, 2012. In accordance with the Rules, paragraph 5(a), the due 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 filed with the Center on November 19, 2012. On November 20, 2012, the Complainant submitted a supplemental filing 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, the 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.
The Center appointed Andrew F. Christie as the sole panelist 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 Rules, 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 explaining the manner 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 Procedural 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 technological 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 platform”). The Android platform is an open source development platform 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 platform-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 applications available on the Android platform has grown rapidly over the past five years. M estimates that there were 600,000 applications for the Android platform available on Google Play as of June 2012.
The Complainant owns many registrations 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 website. The website is used to distribute applications developed for the Android platform, and to display advertising. Following a letter of demand sent by the Complainant to the Respondent on May 30, 2012, the website was modified to include a disclaimer stating ““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 non-distinctive terms “apps store”, particularly as it describes an online 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 trademark will cause users encountering the disputed 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 contentions that the Respondent has no rights or legitimate interests in the disputed domain name including: (i) the Respondent is undoubtedly familiar with the ANDROID trademark because the website to which the disputed domain name resolves prominently features the “Android Robot” logo, and markets applications specific to the Android platform, 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 offered 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 order to trade off the Complainant’s reputation, which is not a bona fide use; (iv) 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 evidence that the Respondent has no 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 ANDROID 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 containing the ANDROID trademark; and (vii) the website to which the disputed domain name resolves is used to compete with the Complainant’s own application marketplace 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 unique qualities 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 uses the disputed domain name to resolve to a website from which it offers for sale, and presumably sells, Android platform applications competing with the Complainant’s applications offered under the ANDROID trademark and with the Complainant’s retail services 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 titled “Android Market” retail platform, and misrepresents 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 thinking the Respondent is affiliated 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 the 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 Respondent made the following contentions: (i) that the Complainant applied for a trademark in Australia for ANDROID in class 35, online retail services, on October 31, 2011, (following an earlier application in Argentina on May 9, 2011) well after the Respondent 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 Respondent 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 commons trademark license; (v) the phrase “Android Apps” has become descriptive, being used to 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 trademark in a domain name offering Android applications; (vii) the Complainant supplies the Android operating system (on open source terms), and the Respondent is only providing Android applications which third parties are able to do; (viii) 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 – supplemental filing
The Complainant submitted to the Center on November 20, 2012, a supplemental filing containing statements refuting many of the Respondent’s contentions, including statements to the effect that: (i) the Respondent does not satisfy the four elements 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 does 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 from 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 disputed domain name; (iv) the defence 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; (vi) the trademark ANDROID is not descriptive of applications that operate on the Android platform, and although the trademark ANDROID has a secondary meaning (the Android platform) that secondary meaning is derived from and inextricably linked to the Complainant’s use of the ANDROID trademark; and (vii) 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 Android applications; (ii) the word “Android” does not have any secondary meaning derived from the Complainant’s use of the ANDROID trademark, because the word “Android” is not used exclusively by the Complainant, the Complainant’s consumer-facing use of the word 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 descriptive 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 initial interest confusion because a visitor to the website to which the disputed domain name resolves gets what they want – namely, legally downloadable Android apps; (v) by bringing this Complaint the Complainant is attempting to restrict or control the Respondent’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 applications 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. The Respondent’s supplemental 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 ANDROID, with the addition of the words “apps” and “store”, and the ccTLD identifier “.”. This Panel finds the 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 online 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 rights or legitimate interests in the disputed domain name on the ground that the disputed domain name describes the activities of the Respondent at the website to which it resolves – namely, an online store for apps for the Android platform. 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 out 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 referred 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 Holden Ltd v. Publishing Australia Pty Ltd,WIPO Case No. DAU2011-0002). That is to say, the role of the Respondent in this case is not one of reselling or distributing goods or services bearing the Complainant’s trademark; rather, it is one of distributing 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 first 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 respondent is offering for sale goods or services that are interoperable with other goods or services that bear the complainant’s trademark (hereafter referred to as the “interoperability situation”) the respondent has a legitimate interest in describing its goods or services accurately, and that this legitimate interest will extend to the use of a domain name that contains the complainant’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 respondent’s rights or legitimate interests in the domain name – namely, the circumstances of the respondent making a “fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish” the complainant’s trademark.
A descriptive fair use analysis requires consideration of two issues: (i) is respondent’s use of the domain name “descriptive”?; and (ii) if so, is it “fair”?
The first issue – whether respondent’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 any website to which it resolves – for example, Internet users would generally expect that a domain name containing 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 the 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’.
Put correctly, the question raised by the first issue is not whether the domain name as a whole is being used descriptively, but whether a complainant’s trademark within the domain name is being used descriptively. More specifically, the correct question is whether a respondent is using descriptively that part of the domain name that is identical with or confusingly similar to a complainant’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 the answer to this question will, inevitably, turn on the specific facts of the particular case.
Even if respondent’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 respondent’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 or to tarnish” a complainant’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 respondent 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 the trademark part functions as a trademark (i.e. as badge of trade origin). Under this contention, the effective reading of the disputed domain name is “Android-brand apps store”. The Respondent contends that the correct reading of the disputed domain name 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 is “apps store for Android platform”. 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 in 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 emphasizes 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 evokes the meaning of 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 resolves contains the heading “AndroidTM 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 adopting 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 the 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 domain 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 conclusions, above, that the disputed domain name is confusingly similar to the Complainant’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 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 website. According 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 transfer 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 be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Date: January 14, 2013
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