Google Inc. v David Miller
Claim Number: FA0708001067791
Complainant is Google Inc. (“Complainant”), represented by James
L. Vana, of Perkins Coie LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubex.com>, registered with GoDaddy.com, 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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 27, 2007.
On August 24, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <youtubex.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 26, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
On September 11, 2007, Respondent requested an extension of the date by which a timely Response could be filed. The National Arbitration Forum subsequently granted this request, extending the date by which a timely Response could be filed until October 11, 2007.
A timely Response was received and determined to be complete on October 11, 2007.
A timely Additional Submission was received from Complainant on October 16, 2007 in accordance with the Forum’s Supplemental Rule 7.
On October 17, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that YouTube was founded on February 14, 2005, and registered the domain name <youtube.com> on February 15, 2005. YouTube provides online video services, with an Internet website where users can watch and share original videos. YouTube does not permit videos from its site to be downloaded. All of the YouTube Services have been provided under the YOUTUBE mark continuously since on or around March 1, 2005. YouTube has attracted significant media attention, including several articles published prior to April 4, 2006 (the registration date for the Domain Name).
In November, 2006, YouTube, Inc. was purchased by Complainant, and now
operates as YouTube, LLC, a subsidiary of Complainant.
Complainant is a
The Domain Name at dispute was registered or acquired by Respondent on April 4, 2006. The Domain Name currently resolves to a website featuring a service allowing users to download and save video clips provided by various third party websites, including Google and YouTube. MindImage LLC, an entity owned or controlled by Respondent, has registered numerous other domain names incorporating the YOUTUBE mark, including the following:
Respondent, or MindImage LLC (an entity owned or controlled by Respondent), is the registrant of record for numerous domain names incorporating third party registered trademarks, or minor spelling variations of third party registered trademarks, including the following:
Complainant has sent various call letters to Respondent, demanding transfer of the Domain Name at dispute from Respondent to Complainant.
Complainant contends that YouTube
has used the YOUTUBE mark as a trademark continuously since prior to August 4,
2006, the registration date for the Domain Name. Further, the YOUTUBE mark is
highly distinctive. Finally, YouTube's use of this mark began, and has
continued, in the
Complainant further contends that a domain name is "nearly identical or confusingly similar" to a complainant's mark when it "fully incorporate[s] said mark.” Here, the Domain Name incorporates the YOUTUBE mark in its entirety and is thus confusingly similar to the YOUTUBE mark.
A domain name registrant may not avoid likely confusion by simply adding a descriptive or non-distinctive term to another's mark. The Domain Name at dispute is simply the combination of the YOUTUBE mark with the letter "x." The Domain Name thus implies that Respondent is either Complainant or YouTube or affiliated with Complainant or YouTube, and is offering services specifically related to and focused on YouTube's video services. Consumers are likely to accept this implication, especially given the focus of the <youtubex.com> website on YouTube’s services. This is clearly misleading, as Respondent has no connection with Complainant or YouTube, and is not, and never has been, authorized to use the YOUTUBE mark in any manner. As such, the Domain Name at dispute is confusingly similar to the Complainant’s mark.
From its earliest date of operation, the website to which the Domain Name at dispute resolves made explicit reference to YouTube, its mark and its business, with links to YouTube’s website. Such demonstrated awareness by the Respondent of Complainant's mark defeats a claim by the registrant of rights or legitimate interests in the domain name. Further Respondent’s use of a disclaimer at certain times on its website is evidence of Respondent’s awareness of YouTube and its famous mark.
On information and belief, Respondent is not commonly known by the name or nickname of the Domain Names. Neither "Ryan Perry" nor “MindImage" is remotely similar to "YouTube.” Further, Respondent’s WHOIS information in connection with the Domain Name makes no mention of the Domain Name or the YOUTUBE mark as Respondent’s name or nickname.
Respondent is not now, and never has been, licensed or authorized to use the YOUTUBE mark in any manner by Google or YouTube. Thus, Respondent has no rights or legitimate interests in the Domain Name.
According to Complainant the evidence overwhelmingly supports the conclusion that Respondent registered and is using the Domain Name at dispute in bad faith. First, the YOUTUBE mark is fanciful and unique, and was so prior to the date on which the Domain Name was registered, such that it is extremely unlikely that Respondent simply devised the Domain Name at dispute on its own.
Respondent contends that the domain name at dispute is not identical or confusingly similar to the Complainant's mark. Complainant held no trademark rights in “YouTube” at the time Respondent registered his domain. Additionally, Complainant has failed to establish that a secondary meaning in its mark existed through extensive use in the marketplace at the time of Respondent's registration of the <youtubex.com> domain name. Respondent's domain, in accord with previous Forum findings, deviates and is sufficiently distinguished from Complainant's mark and does not create a likelihood of confusion.
Respondent's <youtubex.com> domain name is not identical to the Complainant's domain name or trademark. Respondent's use of the terms “you” and “tube” within his domain name is offset by the letter “x.” The addition of this representative letter eliminates any perceived identicalness. The “x” designator is a tool often used in marketing circles to indicate an increase in quality, intensity, or dissimilarity. This use of “x” in marketing has come to implicitly embody the idea of the “x-factor,” an increase in performance or desirability that, combined with the underlying product, signifies the superiority of the goods and services offered.
Similarly, Respondent's domain name is not confusingly similar to the Complainant's domain name. The use of another party's mark in a domain to describe the business of the user has been found by the Forum to be a nominative fair use.
Furthermore, Respondent's <youtubex.com> domain name was registered on April 4, 2006. Complainant's domain was registered, in comparison, on February 14, 2005.
Complainant filed for trademark registration with the United States Patent and Trademark Office on January 30, 2006. Complainant's trademark application was, therefore, still pending when Respondent registered his domain. The National Arbitration Forum has previously recognized that “an application for mark is not per se sufficient to establish rights to a trademark for the purposes of the UDRP....” Thus, Complainant has failed to establish trademark registration, and subsequently prima facie rights, at the time of the registration of the <youtubex.com> domain name.
Complainant's mark consists of the generic terms and common words “you” and “tube.” The Forum has previously found that domain registrants cannot monopolize the use of generic terms and common words in domain names.
Since Complainant did not have a registered trademark at the time Respondent registered his <youtubex.com> domain name, Complainant must show that a secondary meaning had been established through its extensive use of the mark in the marketplace in order to establish common law rights. Complainant has failed to submit evidence sufficient to support that it has such rights.
Precisely because Complainant's mark consists of generic terms and common words, Complainant cannot, by definition, submit evidence sufficient to support a finding of secondary meaning. “The extensive use of a generic term... can never give it distinctive or non-descriptive secondary meaning indicating origin.” Therefore, Complainant has failed to establish that Respondent's domain is identical or confusingly similar.
Respondent contends that it has rights and legitimate interests in the domain name at dispute. Respondent has prepared his domain name, before notice of this dispute, for use in a bona fide offering of services ancillary to the services offered by the Complainant. Respondent had made nominative fair use of the Complainant’s mark in his domain name to indicate the target users of his services. Respondent has listed a disclaimer on his website disavowing a connection with the Complainant’s services, and Respondent’s software product does not compete with the Complainant’s video services.
Respondent prepared his domain name, before notice of this dispute, for use in a bona fide offering of services ancillary to Complainant’s video services. Respondent’s <youtubex.com> domain allows users of <youtubex.com> to download videos from the YouTube service for personal use. Respondent has expended significant time and effort in creating this ancillary software product and website. Respondent’s domain generates commercial revenue through a pay-per-click advertising program sponsored by Yahoo; he does not directly profit from the use or sale of Complainant’s non-exclusive license of copyrighted material. Respondent’s profits derive from user clicks garnered from the popularity of his video downloader and its function of aiding users in the exercise of their fair use rights. The Forum has previously recognized that this use, offering companion goods or services at a domain that incorporates the name of the principal service provider, is a nominative fair use of a mark.
Respondent has made nominative fair use of “YouTube” in connection with his <youtubex.com> domain name. As previously stated, incorporation of the Complainant’s name in the Respondent’s domain name to identify Respondent’s products as working in conjunction with Complainant’s video services has been found by the Forum and WIPO to be nominative fair use.
Furthermore, Complainant concedes that Respondent has listed a disclaimer on his website in the past, disavowing association with the Complainant’s services. The Forum has recognized the nominative use of the Complainant’s name in combination with such a disclaimer as fair use.
Complainant fails to recognize Respondent’s current disclaimer, displayed prominently on Respondent’s website next to the YouTube logo. Respondent’s current disclaimer states in unequivocal terms that Respondent is not YouTube and does not offer the same services as YouTube. Respondent’s disclaimer specifically states the nature of his business and its relationship with the YouTube video service.
Respondent’s services do not directly compete with Complainant’s services. Respondent’s downloading services work in conjunction with Complainant’s services.
Respondent’s disclaimer of association with Complainant’s services evidences the fact that Respondent has not intended to misleadingly divert consumers from the Complainant’s services or to tarnish the goodwill associated with Complainant’s mark. Respondent has no personal or economic incentive to do so. In fact, Respondent’s commercial success is directly proportional to the success of the Complainant’s business. Respondent’s business’s symbiotic relationship with the Complainant’s business gives Respondent the economic incentive to ensure that Complainant’s business grows and flourishes. Therefore, Complainant has failed to show that Respondent intended to divert consumers or tarnish Complainant’s mark.
Complainant alleges that Respondent’s WHOIS information inaccurately reflects the identity of Respondent and fails to mention “YouTube.” Respondent agrees that he has never been commonly known as “YouTube.” Indeed, Respondent is commonly known as “YouTubeX,” a mark that makes nominative fair use of the Complainant’s mark to identify Respondent’s target audience. The fact that Respondent’s WHOIS information does not reflect the title of his website has no bearing on whether Respondent has legitimate rights in his domain. The use of a domain name within the registrant’s WHOIS information is not a necessary condition of legitimate rights, even though it may be sufficient to show legitimate rights.
Additionally, Complainant makes several references to an individual named Ryan Perry and a company named MindImage throughout the Complaint, as well as several domains allegedly owned by both. Respondent is neither of these entities. Respondent, as reflected by the <youtubex.com> WHOIS records, is David Miller. Complainant has presented no evidence of a connection between Respondent David Miller and Ryan Perry, nor evidence of a connection between David Miller and MindImage. Instead, Complainant has attempted to confuse the two by introducing evidence of an email communication that alleges Respondent’s website is under the control of Ryan Perry and MindImage, and that Respondent is the owner of numerous domain names. Respondent has never authorized an individual named Ryan Perry to speak on his behalf, nor is Ryan Perry the current owner of the domain. Furthermore, Respondent does not own the numerous domains listed by Complainant.
MindImage is a web application developer that developed Respondent’s software product and hosted Respondent’s domain. Additionally, Respondent purchased his domain from Ryan Perry. The Forum has recognized that a change in registrant information reflecting a change in ownership is considered a new registration. In confusing Respondent with MindImage, Complainant has attempted to disguise its dislike of the Respondent’s exercise of fair use rights as the legitimate subject matter of a domain dispute. Complainant has attempted to confound the panel by arguing that Respondent has a lack of a legitimate interest in the domain upon this basis.
Respondent has legitimately used his domain by offering a bona fide service that allows users to exercise their fair use rights under the DMCA. Respondent has used Complainant’s name only in a nominative sense, recognized as a fair use by both the NAF and WIPO. Furthermore, Respondent has drawn a clear and distinctive line between his products and the products of the Complainant by displaying a disclaimer on his website and by requiring users to gather URLs from the Complainant’s website. Therefore, Respondent has rights and legitimate interests in his domain name.
Respondent contends that it has not registered or used its domain name in bad faith. Respondent did not register his domain name with the intent to prevent Complainant from using its mark. Respondent has exhibited a nominative fair use of Complainant’s mark to indicate his target audience. Respondent has not registered his domain for the purposes of disrupting Complainant’s business, as Respondent’s own business is ancillary to Complainant’s video services. Respondent has taken adequate steps to disavow association with Complainant’s business, and Respondent has posted a disclaimer on his website to prevent any potential or actual confusion of users.
Complainant contends that the “YouTube” mark was “fanciful and unique” prior to the registration of Respondent’s domain. But Complainant’s trademark application was still pending at this time and, therefore, as previously stated, was insufficient to show legitimate trademark rights in these two generic words. Furthermore, Complainant has failed to show that “YouTube” had acquired a secondary meaning at the time of Respondent’s registration.
Complainant contends that Respondent’s current use of the domain name constitutes bad faith. As previously stated, Respondent’s nominative use has been recognized as a legitimate good faith use by both the NAF and WIPO. In addition, the WIPO Overview of Panel Views has recognized this nominative fair use as the majority view of the WIPO panel decisions. WIPO has recognized that the nominative use of a complainant’s mark to sell goods or services related to that mark is in good faith provided the respondent does not offer products that compete with the complainant’s business, the respondent offers a disclaimer disavowing his association with the complainant’s mark, and the respondent does not attempt to corner the market in domains incorporating the complainant’s mark.
Respondent has met all of these criteria. Complainant conceded in the Complaint that Respondent has previously posted a disclaimer disavowing association between the two parties. That disclaimer is still posted on Respondent’s website. Respondents video download service does not compete with Complainant’s video services. Rather, Respondent relies upon Complainant’s video services for his business model. Respondent has not attempted to corner the market in domains that incorporate the Complainant’s mark. Respondent has many competitors that incorporate the Complainant’s mark for nominative use in much the same manner, such as <downloadyoutubevideos.com>, <saveyoutube.com>, and <youtubez.com>. Respondent has merely registered one domain that makes nominative use of Complainant’s name.
Respondent has not intended to attract users of YouTube to his domain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent has used considerable caution to make it clear to users that Respondent is not sponsored by or affiliated with YouTube. Respondent’s actions to prevent such confusion are twofold: 1. Respondent has posted a disclaimer on his website clarifying the relationship between his software product and YouTube, and explicitly disavowing any connection between the two entities; and 2. Respondent’s software product requires users to first navigate to YouTube’s website to obtain the URL link to the video that they wish to download, thus explicitly identifying to the user, with clarity, the lack of affiliation between the two sites. Furthermore, Complainant has failed to submit any evidence of actual confusion to support its claims.
Respondent has not registered his domain name with the purpose of disrupting the Complainant’s business. Respondent has absolutely no incentive to disrupt the business of YouTube, as his own business is ancillary to and dependent upon the YouTube service. If anything, Respondent’s software product increases the user base of the YouTube site by giving users more power over the fair use of their media, thus increasing the user’s incentive, in the face of numerous competitors, to frequent the YouTube service. Any contrary argument would be akin to one that asserted that accessories for Apple’s iPod were created with the purpose of disrupting Apple’s iPod sales—an absurd result.
Finally, Respondent has not registered the <youtubex.com> domain name to prevent Complainant from using its mark. Respondent has merely made nominative use of Complainant’s mark to describe its services to its target audience, a good faith fair use recognized by both the NAF and WIPO.
Therefore, Respondent did not register his domain in bad faith.
In its additional submission,
Complainant contends that it has amply established that its trademark rights
are well prior to registration of the domain name, both because of its earlier
common-law rights (which Respondent does not contest) and due to the foreign
registrations with priority dates prior to the registration of <youtubex.com> on April 4, 2006.
In addition, Complainant's
Respondent also attacks the strength of Complainant's mark, arguing at length about the meanings of "you" and "tube" standing alone. Respondent fails to address the Mark as a whole, which is inherently distinctive. Respondent has presented no evidence that the unitary mark YOUTUBE is in any way descriptive or generic. There is none, and the mark is inherently distinctive. To the extent that secondary meaning is found to be necessary, which Complainant strongly disagrees with, Complainant has also presented ample evidence through brand surveys and media coverage showing that the YOUTUBE mark is and has been among the most famous and popular brands in the world, clearly demonstrating secondary meaning well before registration of the Domain Name in April 2006.
Finally, Respondent's own "fair use" arguments contradict its claims that the YOUTUBE mark is not distinctive. Respondent claims, for example, that his services are an "ancillary software product and website" and are "companion goods or services" intended to "identify Respondent's products as working in conjunction with Complainant's video services. Inherent in these assertions is a claim that consumers recognize the YOUTUBE Mark in connection with the YouTube Services, which in turn demonstrates the distinctiveness of the YOUTUBE mark.
Respondent has argued that the Domain Name is not confusingly similar to the YOUTUBE mark. The addition of the letter "x" does not prevent the Domain Name from being confusingly similar to the mark. In any event prior panels have repeatedly held that a domain name that wholly incorporates a Complainant's mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words, even if the words added directly describe the product.
to Respondent's contentions, the Domain Name is not a "nominative fair
use." Under the "nominative fair use" test, as adopted in some
federal circuits in the
Panel decisions have repeatedly held that use of a domain name "that is confusingly similar to Complainant's mark is not reasonably necessary for Respondent to resell" products. Had Respondent picked a unique and non-confusing domain name, he could use the YOUTUBE mark in the text of a website as reasonably necessary to refer to Complainant's services, but he in no way needs to use Complainant's mark in the Domain Name to identify his own competitive services.
The site at the Domain Name also uses Complainant's mark far more than the reasonably necessary to refer to Google's services. For instance, the <youtubex.com> website prominently features the YOUTUBE logo and screenshots of Complainant's YouTube services, enough by itself to eliminate a nominative fair use claim, even if one existed on the facts here.
Respondent's widespread use of the YOUTUBE mark, the YOUTUBE logo, and screenshots of the website at <youtube.com> all create the legitimate inference that Respondent has some connection with Complainant, for all the reasons discussed above, and constitutes a third independent ground why Respondent's "nominative fair use" argument must fail. As noted above, a small disclaimer is insufficient to avoid confusion given the likelihood of initial interest confusion, and due to Respondent's provision of services that are competitive or closely related to Complainant's own.
Furthermore the website at the Domain Name offers video display, tagging, and sharing services that are directly competitive with Complainant's own services offered under its YOUTUBE mark.
Even if the "services are not directly competitive, they are unquestionably complementary to each other and very closely related at that, so much so that users could reasonably, realistically and readily think that both services emanate from the Complainant.”
Respondent argues that he does not wish to "disrupt" Complainant's business, as his service rides on the goodwill of Complainant. Respondent's assertion of a benign intent simply does not eliminate his bad faith in connection with the use and registration of the Domain Name.
Panel decisions have repeatedly held that use of Complainant's logo on the Respondent's website, as Respondent admits to here, is further evidence of bad faith registration and use.
Finally, the presence of a small disclaimer is entirely insufficient to remedy consumer confusion caused by Respondent's bad faith registration and use of the domain Name. Indeed, the disclaimer merely emphasizes that the Domain Name was registered and used with full knowledge of Complainant's trademark rights.
The Panel finds that:
1. The Domain Name <youtubex.com> is confusingly similar to the Complainant’s marks;
2. Respondent has not established any right or legitimate interest in the Domain Name <youtubex.com>; and
3. Respondent has registered and is using the Domain Name <youtubex.com > in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant asserts rights in the YOUTUBE mark through its continuous and extensive use of the mark since February 14, 2005 and through its registration of the mark with the World Intellectual Property Organization (Reg. No. 897,049 issued March 1, 2006). The Panel finds that this sufficiently establishes Complainant’s rights in the YOUTUBE mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
The <youtubex.com> domain name uses the entire YOUTUBE mark, adds the letter “x” onto the end of the mark, and includes the generic top-level domain “.com.” The Panel finds that the disputed domain name is thus confusingly similar to Complainant’s YOUTUBE mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
While Respondent contends that the <youtubex.com> domain name is comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Respondent further contends that Complainant, Google Inc., had no rights in the YOUTUBE mark at the time Respondent registered the <youtubex.com> domain name on April 4, 2006. However, Complainant provides evidence of its acquisition of YouTube in November 2006 and its assignment of all rights in the YOUTUBE mark.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions, this Panel also takes the position that, while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techns., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Cont’l Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s WHOIS information indicates that Respondent is “David Miller” and Complainant contends that Respondent is not authorized to use the YOUTUBE mark for any purpose. The Panel finds that Respondent is not commonly known by the <youtubex.com> domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Complainant further contends that Respondent’s inclusion of a disclaimer on its website that resolves from the <youtubex.com> domain name is insufficient to establish rights and legitimate interests. The Panel finds that Respondent’s addition of a disclaimer does not support a finding that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that the respondent wishes to trade on the fame of the complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion).
Complainant alleges that Respondent is using the <youtubex.com> domain name, which is confusingly similar to Complainant’s YOUTUBE mark, to offer services directly related to Complainant’s YouTube services, but in violation of YouTube’s terms of service. The Panel finds that Respondent is attempting to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with the <youtubex.com> domain name and Respondent’s corresponding website. The Panel is of the view that this indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Furthermore, Complainant contends Respondent’s inclusion of a disclaimer on the website that resolves from the <youtubex.com> domain name does not overcome the initial confusion created by the disputed domain name. The Panel finds that, under Policy ¶ 4(a)(iii), Respondent’s disclaimer does not mitigate any bad faith registration and use on the part of Respondent. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubex.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: October 24, 2007
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