Google Inc. (“Complainant”) just lost a UDRP on the domain anem androidtv.com and xbmcandroidtv.com

Its a pretty interesting case in which the Panel winds up punting saying the dispute is outside of scope of the UDRP but I think having read all the facts and findings of the panel and the argument of the respondent, this UDRP should not have been dismissed on its merits not as being outside the scope of the UDRP.

Here we go:

“””Complainant offers a software platform and operating system under the ANDROID Mark. The Android operating system was first developed in 2003 by Android, Inc., a Palo Alto company specializing in mobile device software.

“Google acquired Android, Inc. in August 2005. Android is the world’s most popular mobile platform and powers hundreds of millions of phones, tablets, and other devices.

“One of Google’s products that integrates the Android platform is Google TV. ”

“Launched in October 2010, Google TV offers enhanced viewing of TV episodes, movies and YouTube Channels on demand, and allows users to browse websites and watch television at the same time.”

“Android applications developed for Google TV are available for download on the Google Play store.”

:In its Response, Respondent contends the following:”

On November 2, 2006, Mr. Escovar registered the domain name with GoDaddy.com.

The domain name was registered for purposes of displaying the type of Hollywood-centric videographic content that Mr. Escovar produced, but with a “bot” feel (or theme) to it. To some it may seem odd to connect robots and TV as a viable business strategy, but Mr. Escovar was not the only one to build on that connection.

As early as 2002 a business connection already existed between TV and androids by others.

Shortly after registering the disputed domain name, Mr. Escovar began advertising his business in connection with the new domain name as a commercial website that his customers could visit.

For example, he began advertising in January of 2007 in Jack Magazine.

On August 1, 2013, Mr. Escovar formed a partnership with Messrs. Beaman and LaBossiere to execute a more robust business plan through the use of the domain name.

Messrs. Beaman and LaBossiere brought expertise to the table that Mr. Escovar lacked.

The three gentlemen had been engaged in business talks since at least 2012. Pursuant to the terms of the agreement, each of the three gentlemen owned one-third of the partnership that now owned the domain name as part of the partnership named Exo Level. Jason LaBossiere was the IT administrator for the partnership, and was responsible for updating the registrant information with GoDaddy.com to reflect the update in ownership from full ownership by Mr. Escovar to one-third ownership by Mr. Escovar and Messrs. Beaman and LaBossiere. With the influx of new capital and expertise, Mr. Escovar and his partners were able to enhance and broaden the content of the “www.androidtv.com” website, including continuing to promote Hollywood-centric videographic services, celebrity news, and the promotion of a set top box employing the android platform, which Google permits the public to do.

As of November 2006, the month that Mr. Escovar registered his domain name, Google did not use the term “android” in any commercial sense.

Google did not seek federal trademark protection for ANDROID until October, 31, 2007, almost a year later.

Even then it was filed as an intent-to-use application under Section 1(b). Between November of 2006 and October of 2007, Google did not use the word “android” in any commercial or trademark form; and Google has not submitted any evidence showing otherwise. Thus, as between Mr. Escovar and Google, Mr. Escovar came first.

On November 5, 2007, a few days after filing its federal trademark registration application, and a year after Mr. Escovar registered the domain name , the Open Handset Alliance unveiled for the first time the Android operating platform.

The Open Handset Alliance is an industry consortium that includes Google and many other large members of the software and computer industry. Since then, numerous companies have developed products that employ the Android operating platform and have developed applications that can be used on the android operating platform.

Google not only permits this, it encourages it, as reflected in Google’s published developer guidelines.

Google also permits and encourages use of its green-robot logo. See http://developer.android.com/legal.html and http://developer.android.com/distribute/googleplay/promote/brand.html.

For purposes of addressing likelihood of confusion on the merits in this action, Respondent will presume arguendo that Google established trademark rights in the mark ANDROID as of October 2008.

Google contends essentially that the similarity of the domain name to Google’s ANDROID trademark is sufficient to prove likelihood of confusion. Given the ubiquity of android-based domain names in use today, a simple comparison between Google’s ANDROID mark and Respondent’s domain name is not enough.

The breadth of Google’s ANDROID mark must be considered in view of all of the other marks, registrations, and domain names in use that are the same or similar to Google’s. In that regard, there are numerous domain names that use the word android in the name. Unless all of those companies are infringers, which is not the case given that Google permits companies to promote products using the android operating platform, more must be shown than merely concluding that is likely to be confused with ANDROID by a comparison in the abstract.

Notwithstanding more than six years of concurrent existence, Google has not presented a single shred of evidence of actual confusion, or of how strong a consumer’s association would be between the word “android” and the designation “tv.” It is merely presumed by Google in its Amended Complaint.

The word “tv” added to the domain name does not reflect a product marketed under Google’s ANDROID mark. TV is only marketed by Google under the name GOOGLE TV.

Mr. Escovar registered the domain name before Google ever adopted the word “android” for commercial use, and long before Google ever contacted Mr. Escovar or his company Exo Level. Google only first contacted Exo Level about in late November of 2013. That initial contact was four months after Messrs. Beaman and LaBossiere joined Mr. Escovar as corporate partners, and seven years since Mr. Escovar first registered the domain name .

As discussed above, even as early as 2002, others maintained such a business connection (i.e., Hollywood and robots). Indeed, J. J. Abrams, one of Hollywood’s best-known producers, owns a production company called Bad Robot that has operated since 2001.

Mr. Escovar and Exo Level, like the owner of in 2002 and Mr. Abrams since 2001, see commercial value in linking Hollywood and robots. Thus, Google has not shown that Respondent does not have a legitimate business interest in the domain name.

Respondent has not engaged in activities or actions that reflect bad faith.

Rather, since 2006, Respondent, through Mr. Escovar, has operated and maintained a legitimate Hollywood-centric videographic services business, in which that business is promoted through, among other sites, its site.

The “www.androidtv.com” website has never been used to direct viewers to a non-existent business or to draw consumers away from Google; and Google has not presented any evidence that shows as much. Respondent has also never sought to park the domain name for purposes of renting it or selling it to Google. Nor has Respondent ever attempted to disrupt the business of Google in any way.

In alleging bad faith, Google relies upon two flawed premises.

The first is that Respondent’s first date of domain name use is 2013, rather than 2006.

For reasons discussed above, Google is incorrect.

The second is that Respondent’s selling of a set top box that employs an android operating system and Respondent’s use of the green-robot logo shows bad faith. That is also wrong because Google encourages the public to do both. Google also alleges that Respondent must have proceeded in bad faith because they adopted a domain name with the word “android” in it. That ignores the fact that numerous businesses have adopted the word “android” as part of their domain name and several promote or showcase products that employ an android operating system and use the green-robot logo.

“In that regard, this not a typical ICANN dispute.”

“This case is significantly different because the Complainant encourages countless businesses to use its technology and use its trademark. That is typical of open-source technology. Thus, asking the Administrative Panel to presume bad faith based upon Respondent’s doing what Google expressly permits others to do, would be inappropriate. Although Respondent does not concede that it violated Google’s developer policy, as Google alleges, Google may pursue redress of that alleged violation in a proper forum, but not in the present UDRP domain name dispute. Respondent recognizes that, given its size, Google faces issues with cybersquatters and others that create confusion in bad faith. But it is improper to lump them altogether and presume bad faith without considering all of the facts associated with each case individually.

The disputed domain name was registered on September 24, 2012 by Mr. LaBossiere on behalf of Exo Level Inc. Immediately after registering the domain name, Respondent put it to use.

Google fails to supply any evidence that the public recognizes any connection at all between Google and XBMC. Indeed, it is likely that the public does not because XBMC was originally developed in 2002 for the X-Box device, not for a Google device. More importantly, it was Respondent who first merged open-source XMBC technology together with open-source android technology. To the extent that Google is presently attempting to associate itself with XBMC, such association post-dates Respondent’s use.

On November 2, 2006, Mr. Fernando Escovar registered the disputed domain name . According to GoDaddy.com`s receipt number 51617300 of the same date submitted by Respondent Mr. Escovar paid for the registration. The payment information on the receipt also states the name “Prive TV”.

On August 27, 2012, EXOLEVEL INC was incorporated by Mr. Jason LaBossiere. On September 24, 2012 Respondent registered the disputed domain name.

On August 1, 2013 Messrs. Escovar, LaBossiere and Sean Beaman entered into a partnership agreement to be conducted under the name of Exo Level for the following purpose: “Androidtv.com; AndroidTV(tm); Red carpet & exclusive celebrity interviews, tv channel, streaming tv and movies, televisions and tv set top boxes”.

The Panel is of the opinion that the present UDRP proceeding is not the proper forum to discuss compliance of developers with the guidelines for Android establishing when branding a device should be deemed correct or incorrect.

These issues belong to a legal dispute which is outside the scope of paragraph 4(a) of the UDRP, and should more properly be decided before a court of the competent jurisdiction according to paragraph 15(e) of the Rules. In this regard, the Panel notes that both Complainant and Respondent are located in California, USA and are presumably amenable to the state and federal courts of California.

Clearly differing from any wide-scope action brought before a court of competent jurisdiction, proceedings under the Policy are a simplified and expedited means to obtain an administrative decision after – typically – just one round of writings and without hearings, which makes them apt to determine whether a clear case of cybersquatting exists or not.

Paragraph 135 of the Final Report of the WIPO Internet Domain Name Process of April 30, 1999, states: “(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.”

The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”);

Since the present dispute is beyond the scope of the ICANN UDRP, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the and domain names REMAIN WITH Respondent.”””

The panel did not deal with the fact that the domain was registered before Google’s trademark, that the domain name was in use and had a huge business plan behind it basically punting on the decision.