Google LLC v. Steven DahFish
Claim Number: FA2103001939635
Complainant is Google LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Steven DahFish (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--yotube-jya.com>, 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 March 30, 2021; the Forum received payment on March 30, 2021.
On March 31, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <xn--yotube-jya.com> 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 April 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2021 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@xn--yotube-jya.com. Also on April 1, 2021, 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. An informal Response was received on April 19, 2021.
On April 27, 2021, 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 formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The domain name in dispute, <xn--yotube-jya.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <yoùtube.com>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the <yoùtube.com> properly in the <xn--yotube-jya.com> domain name, it first had to encode it into the <yoùtube.com> domain name.
In the past, panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). The Panel therefore finds that the <xn--yotube-jya.com> domain name is the same as its PUNYCODE translation, <yoùtube.com>, for purposes of this proceeding and that accordingly the disputed domain name is confusingly similar to the YOUTUBE trademark .
A. Complainant
Complainant made the following contentions.
Complainant, Google LLC, is the owner of the YouTube video sharing service. The video service was launched in 2005 by its previous owner and grew quickly becoming one of the most popular websites. Complainant registered the YOUTUBE mark with the United States Patent and Trademark Office (USPTO). The disputed domain name, <xn--yotube-jya.com>, is identical or confusingly similar because it is an internationalized domain name that wholly incorporates Complainant’s YOUTUBE mark but for the addition of an accent mark about the first letter “u” before being translated into PUNYCODE and adds the “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent does not have any rights or legitimate interests in the <xn--yotube-jya.com> domain name because Respondent is not commonly known by the <xn--yotube-jya.com> domain name nor has it received authorization from Complainant to use Complainant’s YOUTUBE mark. Respondent is not using the <xn--yotube-jya.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the <xn--yotube-jya.com> domain name to offer financial services, a use unrelated to Complainant.
Respondent registered or uses the <xn--yotube-jya.com> domain name in bad faith because Respondent is using the website to attract users for commercial gain through the confusion in the affiliation caused between Complainant and Respondent’s website. Respondent also registered the <xn--yotube-jya.com> domain name with actual knowledge of Complainant’s rights in the YOUTUBE mark.
B. Respondent
Respondent failed to submit a formal response. However, it submitted an informal Response on April 19, 2021 in which it stated, formal parts omitted, “We have no idea what this is about.”
1. Complainant is a United States company that is the owner of the famous You Tube video sharing service.
2. Complainant has established its trademark rights in the YOUTUBE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.3,711,233, registered Nov.17, 2009).
3. Respondent registered the <xn--yotube-jya.com> domain name on April 1, 2020. See Compl. Ex. B. The registration of the <xn--yotube-jya.com> domain name expired on April 1, 2021 and there is no evidence to show that the registration was renewed.
4. Respondent is using the <xn--yotube-jya.com> domain name to offer financial services, a use 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 formal 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 of the mark with the USPTO (e.g., Reg. No. 3,711,233, registered Nov. 17, 2009). See Compl. Ex. D. Registration of a mark with the USPTO is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds that Complainant has rights in the YOUTUBE 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 the <xn--yotube-jya.com> domain name is identical or confusingly similar because of its nature as an internationalized domain name. Use of a internationalized domain name that exchanges one letter for another in a disputed domain name may still be found as confusingly similar to a complainant’s mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010) (finding <bıng.com> [xn--bng-jua.com] confusingly similar to BING and noting, “The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶ 4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark”). Here, the <xn--yotube-jya.com> domain name is PUNYCODE for the domain name, <yoùtube.com>. See Compl. Ex. F. The pre-translated domain name, <yoùtube.com>, wholly incorporates Complainant’s YOUTUBE mark but for the addition of an accent mark placed above the first letter “u”. Therefore, the Panel finds that the <xn--yotube-jya.com> domain name is identical or confusingly similar to the 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”).
(a) Respondent has chosen to take Complainant’s YOUTUBE trademark and to use it in its domain name;
(b) Respondent registered the xn--yotube-jya.com> domain name on April 1, 2020;
(c) Respondent has caused the <xn--yotube-jya.com> domain name to resolve to a website that offers financial services, a use that is unrelated to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <xn--yotube-jya.com> domain name because Respondent is not commonly known by the <xn--yotube-jya.com> domain name nor has authorization to use Complainant’s YOUTUBE mark. A respondent may be found not to be commonly known by a domain name, under ¶ 4(c)(ii), where the identifying WHOIS information is unrelated to the domain name and where respondent has not received authorization to use a complainant’s mark. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). See also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information provided by Complainant lists the registrant as “Steven DahFish”. See Registrar Verification Email. Complainant also submits that it has not given authorization to Respondent to use Complainant’s YOUTUBE mark. Therefore, the Panel finds Respondent was not commonly known by the <xn--yotube-jya.com> domain name under ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not have any rights or legitimate interests in the <xn--yotube-jya.com> domain name because Respondent is not using the <xn--yotube-jya.com> domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent is using the <xn--yotube-jya.com> domain name to promote services unrelated to Complainant. Using a confusingly similar domain name to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). Here, Respondent’s website is being used to offer financial servces, especially in foreign currency exchange. See Compl. Ex. E. This is different than Complainant’s services which are to offer a social platform to share videos. Therefore, the Panel finds that Respondent is not using the <xn--yotube-jya.com> domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (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 argues that Respondent registered or is using the <xn--yotube-jya.com> domain name in bad faith as an attraction for commercial gain through diverting users away from Complainant’s website. Under Policy ¶ 4(b)(iv), where a disputed domain name obviously uses a complainant’s mark in a way that diverts users to a respondent’s commercial website, past panels have found bad faith attraction for commercial gain. See CMG Worldwide, Inc. v. Lombardi, FA 95966 (Forum Jan. 12, 2001) (finding that the respondent’s use of the complainant’s VINCE LOMBARDI mark to divert Internet users to its commercial website located at the <vincelombardi.com> domain name constituted bad faith use and registration of the disputed domain name). Here, Respondent purports to offer financial advice and services to users. See Compl. Ex. E. Respondent uses the domain name to divert users because it employs a domain name that is confusingly similar to Complainant’s mark. Therefore, the Panel finds that Respondent registered and uses the <xn--yotube-jya.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent acted with actual knowledge of Complainant’s rights in Complainant’s YOUTUBE mark when Respondent registered or used the <xn--yotube-jya.com> domain name. Actual notice can be found where a respondent uses a well-known mark in a way that diverts users to respondent’s website for commercial gain. See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). Respondent used the YOUTUBE mark in a website that offered financial services. Complainant’s YOUTUBE mark is associated with the widely-used video sharing platform YOU TUBE. Complainant states that due to Respondent’s use of the YOUTUBE mark, Respondent acted with intent to exploit Complainant’s YOUTUBE mark. Therefore the Panel finds that Respondent acted with actual knowledge of Complainant’s trademark and thus registered and/or uses the <xn--yotube-jya.com> domain name in bad faith.
Thirdly, Complainant argues that Respondent’s bad faith is further demonstrated by its use of a privacy service to disguise its identity. Using a privacy service on WHOIS, though usually not dispositive on its own, may add to an independent finding of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel notes that Respondent’s identity was originally shielded on WHOIS by a privacy service. See Compl. Ex. B. Therefore, as the Panel agrees, it finds Respondent’s use of a privacy service contributes to a finding of bad faith under Policy ¶ 4(a)(iii).
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 <xn--yotube-jya.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 3, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page