Google Inc. v. Sanjay
Nimbalkar
Claim Number: FA0708001068746
PARTIES
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 <wwwyoutube.com>, registered with Lead Networks
Domains Pvt.
PANEL
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 27, 2007; the
National Arbitration Forum received a hard copy of the Complaint on August 27, 2007.
On September 19, 2007, Lead Networks Domains Pvt. confirmed by e-mail
to the National Arbitration Forum that the <wwwyoutube.com> domain name is
registered with Lead Networks Domains Pvt.
and that the Respondent is the current registrant of the name. Lead Networks
Domains Pvt. has verified that Respondent is bound by the Lead Networks Domains Pvt. 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 27, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 17, 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 postmaster@wwwyoutube.com by
e-mail.
On October 24, 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 November 6,
2007.
A timely Response was received and determined to be complete on November 6, 2007.
Both parties submitted timely additional submissions pursuant to the
Forum’s Supplemental Rule 7.
On November 14, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that the disputed domain name <wwwyoutube.com> is confusingly similar to YOUTUBE, a mark in
which Complainant claims to have rights; that Respondent lacks rights or
legitimate interests in the domain name; and that Respondent registered and is
using the domain name in bad faith. In
support of these allegations, Complainant states, inter alia, that it and its predecessor in interest have used
YOUTUBE as a highly distinctive trademark continuously since on or before March
1, 2005; that prior to August 14, 2005, when Respondent registered the disputed
domain name, YOUTUBE had become widely known as an identifier for the services
offered by Complainant and its predecessor; that Complainant possesses
common-law trademark rights in the YOUTUBE mark and has registered or applied
to register the mark in the United States and elsewhere; and that the disputed
domain name, being comprised of the YOUTUBE mark appended to “www” (meaning
“world wide web”) and the generic “.com” top-level domain suffix, is
confusingly similar to the mark.
Complainant further contends that Respondent lacks rights or legitimate
interests in the domain name, on the grounds that Respondent’s use of the
domain name for a website that merely contains links to other commercial
websites, presumably generating “clickthrough” revenues for Respondent,
constitutes neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
domain name; that Respondent is not commonly known by the domain name; and that
Respondent has not been licensed or authorized to use the YOUTUBE mark. Finally, Complainant alleges that Respondent
must have been aware of the YOUTUBE mark when he registered the disputed domain
name, and selected it because of its similarity to the mark in order to profit
from “clickthrough” revenues generated by attracting Internet users through
confusion with the mark. (Complainant
also makes additional assertions relevant to bad faith, including a claim that
Respondent has engaged in a pattern of registering domain names containing
misspellings of registered trademarks.)
B. Respondent
Respondent denies all of the allegations in the Complaint, and states
that it “should be dismissed with compensatory costs,” as it lacks merit and
represents “a gross abuse of the process.”
Respondent states that both he and Complainant are “into the business of
search engine monetization,” and that the Complaint “is mutually destructive”
of this business. Respondent
characterizes himself as a “bonafidy [sic] purchaser for value without notice,”
and elsewhere in the Response refers to having purchased the domain name from
another registrant, Max Low, having paid “a very high valuable consideration
for the same based on the earnings of the said domain name.” Respondent also furnishes a list of 500 domain
names, all beginning with “www,” that he asserts are representative of 1.5
million such names that are being used by Complainant and that violate
trademark rights of third parties. Respondent
states that these domain names “are being redirected” (apparently by the unrelated
third parties that registered these names) “to the Complainant’s search engine
and as a consequence thereof, the Complainant derives financial gains from this
[sic] domain names.”
C. Additional Submissions
Paragraph 12 of ICANN’s Rules for Uniform Domain Name Dispute
Resolution Policy (the “Rules”) vests the Panel with sole discretion to request
further statements or documents from either of the Parties. In this case the Panel considers that the
Complaint and Response provided the Panel with a sufficient basis to rule upon
the present matter. Having reviewed
those documents together with the additional submissions filed by the parties, the
Panel finds no circumstances present that warrant supplementation of the
record. The Panel therefore declines to
consider the parties’ additional submissions.
FINDINGS
The Panel finds that the disputed domain name
is confusingly similar to a mark in which Complainant has rights,
that Respondent lacks rights or legitimate interests with respect to the
disputed domain name, and that Respondent registered and has used the disputed
domain name in bad faith.
DISCUSSION
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 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.
The disputed domain name, <wwwyoutube.com>, contains the Complainant’s
well-known and distinctive common-law mark YOUTUBE, preceded by the letters
“www” (meaning “world wide web” and commonly found preceding domain names used
for websites), with the generic top-level domain suffix “.com” appended
thereto. The Panel has no doubt that the
disputed domain name is confusingly similar to Complainant’s mark.
Complainant has made a prima facie showing
that Respondent lacks rights or legitimate interests in respect of the disputed
domain name, and the burden therefore shifts to Respondent to rebut this
showing with evidence of its rights or legitimate interests. See,
e.g., Am. Online, Inc. v. Thricovil, FA638077 (Nat. Arb. Forum Mar. 22,
2006). Respondent has failed to meet
this burden. Furthermore, the fact that
Respondent may have purchased the domain name from a prior registrant does not
give rise to rights or legitimate interests under the Policy, any more than
does paying a registration fee to a domain name registrar. See,
e.g., Enterprise Rent-A-Car Co. v. D’Souza, FA1045134 (Nat. Arb. Forum Oct.
12, 2007). The Panel concludes that
Complainant has met its burden of proving that Respondent lacks rights or
legitimate interests with respect to the disputed domain name.
In the Panel’s view, Respondent’s acquisition
and use of the domain name seems calculated to attract Internet users to
Respondent’s website by creating a likelihood of confusion with Complainant’s
mark and to profit from that traffic.
Under Paragraph 4(b)(iv) of the Policy, such
circumstances serve as evidence that Respondent registered and is using the
domain name in bad faith, and the Panel so concludes.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwyoutube.com> domain name be TRANSFERRED
from Respondent to Complainant.
David E. Sorkin, Panelist
Dated:
November 28, 2007
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