Google LLC v. Cang hua / Canghua
Claim Number: FA2011001921973
Complainant is Google LLC (“Complainant”), represented by John C. Nishi of Dickinson Wright PLLC, Michigan, USA. Respondent is Cang hua / Canghua (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubemp4.biz>, registered with NameCheap, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 25, 2020; the Forum received payment on November 25, 2020.
On November 25, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <youtubemp4.biz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2020 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@youtubemp4.biz. Also on December 1, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
A. Complainant
Complainant made the following contentions.
Complainant, Google LLC, operates a technology company specializing in Internet-related services. Complainant has rights in the YOUTUBE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. 3,711,233, registered Nov. 17, 2009). See Compl. Ex. 10. Respondent’s <youtubemp4.biz> domain name is confusingly similar to Complainant’s YOUTUBE mark, only differing by the addition of the generic term “MP4” and the “.biz” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <youtubemp4.biz> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the YOUTUBE mark. Additionally, Respondent does not use the disputed domain name for a bona fide offer of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent purports to offer Internet users the ability to download and save content from Complainant’s YouTube website, directly violating Complainant’s Terms of Service, and circumventing features of the Complainant’s services. Moreover, the disputed domain name resolves to a website which features pay-per-click advertising unrelated to Complainant.
Respondent registered and uses the <youtubemp4.biz> domain name in bad faith. Respondent attempts to capitalize and profit on the fame of Complainant’s YOUTUBE mark by attracting Internet users to Respondent’s webpage. Respondent’s bad faith is further evidenced by the disputed domain name purporting to enable Internet users to violate Complainant’s YouTube Terms of Service. Furthermore, Respondent uses the disputed domain name in connection with pay-per-click advertising, allowing Respondent to reap financial gain from Complainant’s YOUTUBE mark. Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark given the Complainant’s notoriety as well as the Respondent’s use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that operates a technology company specializing in Internet-related services.
2. Complainant has established its trademark rights in the YOUTUBE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. 3,711,233, registered Nov. 17, 2009).
3. Respondent registered the disputed domain name on December 8, 2018.
4. Respondent purports to offer Internet users the ability to download and save content from Complainant’s YouTube website, directly violating Complainant’s Terms of Service, and circumventing features of the Complainant’s services. Moreover, the disputed domain name resolves to a website which features pay-per-click advertising unrelated to Complainant.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the YOUTUBE mark through its registration with the USPTO. Generally, registration of a mark with a trademark agency such as the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration of the YOUTUBE mark with the USPTO (e.g., reg. 3,711,233, registered Nov. 17, 2009). See Compl. Ex. 10. Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s YOUTUBE mark. Complainant argues that Respondent’s <youtubemp4.biz> domain name is confusingly similar to Complainant’s YOUTUBE mark, differing only by the addition of the generic term “MP4” and the “.biz” gTLD. Addition of a generic and/or descriptive term and a gTLD does not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain name is confusingly similar to the Complainant’s YOUTUBE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s YOUTUBE trademark and to use it in its domain name;
(b) Respondent registered the disputed domain name on December 8, 2018;
(c) Respondent purports to offer Internet users the ability to download and save content from Complainant’s YouTube website, directly violating Complainant’s Terms of Service, and circumventing features of the Complainant’s services. Moreover, the disputed domain name resolves to a website which features pay-per-click advertising unrelated to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <youtubemp4.biz> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the YOUTUBE mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Here, the WHOIS information of record shows that Respondent made use of a privacy service to redact their information. See Compl. Ex. 4. However, the registrar verified that the registrant of the disputed domain name is was “Cang hua / Canghua”. See Amend. Compl. Ex. 15. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant further alleges that Respondent does not use the <youtubemp4.biz> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent purportedly offers Internet users the ability to download and save content from Complainant’s YouTube website. Encouraging Internet users to violate a complainant’s terms of service does not amount to a bona fide offer of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the domain name in association with a website that enabled Internet users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant argues that this directly violated Complainant’s YouTube Terms of Service, which expressly prohibits the unauthorized downloading and saving of content from the YouTube website. See Compl. Ex. 12.The Panel therefore finds Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant contends that Respondent lacks rights in the <youtubemp4.biz> domain name as Respondent operates pay-per-click advertising with the webpage. Pay-per-click advertisements do not equate to a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides a screenshot of the resolving webpage for the disputed domain name displaying the pay-per-click advertisements. See Compl. Ex. 11. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <youtubemp4.biz> domain name in bad faith because Respondent attempts to reap financial gain by running pay-per-click advertisements on the disputed domain name. Using click-through advertisements for commercial gain displays bad faith under Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). The Panel notes the screenshots of the resolving webpage for the disputed domain name which display the pay-per-click advertisements. See Compl. Ex. 11. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant further alleges the Respondent registered and uses the <youtubemp4.biz> domain name in bad faith because Respondent uses the YOUTUBE mark and a similar logo to Complainant’s to create a likelihood of confusion among Internet users for Respondent’s commercial gain. Using Complainant’s fame in an attempt to confuse Internet users to benefit commercially displays bad faith pursuant to Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website). The logo displayed on the disputed domain name is highly similar to one of Complainant’s. See Compl. Ex. 11 and 14. The Panel therefore finds bad faith registration and use under Policy ¶ 4(b)(iv).
Thirdly, Complainant also contends that Respondent registered the disputed domain name in bad faith as they purportedly offer Internet users a means of violating Complainant’s YouTube Terms of Service, in a sense competing with the Complainant’s legitimate services. Registering and using a disputed domain name to compete with a Complainant displays bad faith under Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). As the Panel agrees that the disputed domain name competes with the Complainant’s legitimate services, it finds bad faith registration and use under Policy ¶ 4(b)(iii).
Fourthly, Complainant maintains that Respondent registered the <youtubemp4.biz> domain name with actual knowledge of Complainant’s rights in the YOUTUBE mark. Registration of a mark with actual knowledge of Complainant’s rights in the mark displays bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). In this case, Complainant provides evidence of its notoriety and the news coverage of their acquisition of the YOUTUBE mark. See Compl. Ex. 7 and 8. Additionally, Complainant contends that Respondent’s knowledge is evidently based on the disputed domain name resolving to a webpage purporting to enable Internet users the ability to download and save videos from Complainant’s legitimate <youtube.com> website. Therefore, the Panel finds Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the YOUTUBE mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubemp4.biz> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 28, 2020
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