National Arbitration Forum
DECISION
Google Inc. v. YiWuShi
Shuangfeng Jixie Youxian Gongsi c/o Huang Jian
Claim Number: FA0803001159972
PARTIES
Complainant is Google Inc. (“Complainant”), represented by James
L. Vana, of Perkins Coie LLP, Washington, USA. Respondent is YiWuShi Shuangfeng Jixie Youxian Gongsi c/o Huang Jian (“Respondent”), represented by Shang Jiangang, of Shanghai Diligence Law Firm,
Shanghai, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtube.net>
(the disputed domain name”), which
is registered with Enom, Inc.
(“Enom”).
PANEL
The undersigned, David H Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on March 11, 2008;
the Forum received a hard copy of the Complaint on March 12, 2008.
On March 11, 2008, Enom confirmed by e-mail to the Forum that the <youtube.net> domain name was registered with
it and that the Respondent was the current registrant of the name. Enom has
verified that Respondent is bound by its 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 March 25, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding, setting a deadline
of April 14, 2008 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@youtube.net by e-mail.
A timely Response was received and determined to be complete on April 11, 2008.
A timely Additional Submission was received from Complainant on April
17, 2008 and determined to be complete pursuant to Supplemental Rule 7.
A timely Additional Submission was received from Respondent on April
21, 2008, and determined to be complete pursuant to Supplemental Rule 7.
On April 22, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed David H Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Among other allegations, Complainant states as follows –
·
Complainant’s
subsidiary, Youtube LLC was founded on February 14, 2005 and registered the
domain name <youtube.com> on February 15, 2005.
It was acquired by Complainant in November 2006.
·
YouTube
LLC provides online video services at a website where users can watch and share
original videos.
·
There
are two pending US applications for the trademark YouTube.
Nos. 78/802,261 and 78/802,278 both
filed on January 30, 2006 and both claiming March 1, 2005 as the date of first
use for some services, and April 24, 2005 for the remainder. Both are in the course of being assigned to
Complainant. In addition, there are
trademark registrations of YOUTUBE in Hong Kong,
Japan, Mexico, and Taiwan
as well as an International Registration No.
897,049 dated March 1, 2006 but claiming the priority date of January 30, 2006,
which is extended to Australia,
China
and the European Community. All of
these trademarks are also in the course of being assigned to Complainant.
·
The
disputed domain name was first registered on August 14, 2005. It had three different owners before being
transferred to Respondent.
Complainant, through its counsel in the US and Taiwan, has corresponded with at
least two of these owners, both in English and Chinese with regard to effecting
an assignment of the disputed domain name, but thus far without success.
·
The
website at the disputed domain name offers pornographic videos.
·
The
disputed domain name is effectively identical to Complainant’s YOUTUBE
trademark which has been used, inter alia
in the US,
since prior to July 19, 2007 which is the earliest date on which Respondent
could have acquired ownership of the disputed domain name.
·
Respondent
has no rights or legitimate interests to the disputed domain name because:
Ø
it
contains links to sources for video content which is a core service of Complainant
under the trademark YOUTUBE;
Ø
use of a
domain name to provide pornographic content cannot establish bona fide use of a domain name or a
legitimate interest;
Ø
Respondent
is not commonly known by the domain name as a name or nickname;
Ø
Respondent
has never been licensed or authorized by Complainant to use its trademark
YOUTUBE.
·
Respondent
registered and is using the disputed domain name in bad faith because:
Ø
The
trademark YOUTUBE is fanciful and unique and it is extremely unlikely that
Respondent devised the disputed domain name on his own.
In any case, he acquired it only after its former owners had received notice of
Complainant’s rights in the name. The avoidance of the transfer or the
cancellation of a domain name through multiple transfers is evidence of bad
faith.
Ø
Respondent’s
current use of the disputed domain name also resolves to other entities
offering services which are in direct competition with the services offered by
Complainant under the name YOUTUBE.
Ø
Links to
commercial websites offering pornography is also evidence of bad faith.
B. Respondent
In its Response, Respondent states as follows –
·
Complainant
has not registered the trademark YOUTUBE in China.
Its International Registration was extended to, inter alia, China on October 19, 2006 whereas
the disputed domain name was registered on August 14, 2005. Therefore, Complainant has no trademark rights in
YOUTUBE in China
before these proceedings commenced.
·
Complainant
is not shown as the owner of the trademark YOUTUBE on the certificates provided
by Complainant. In addition, the
records of the alleged assignment of these marks provided by Complainant are
without any notarization or embassy authentication.
·
The information
filed by Complainant regarding its acquisition of YouTube Inc. comes from websites which include Google Press
Center, and therefore
lack impartiality or independence.
·
Complainant
has not applied to operate in China
so it has no right to the name YouTube in China.
·
The name
YouTube was not originally created by Complainant since the word ‘tube’ has a
dictionary meaning. Respondent is a
manufacturer and distributor of machinery.
It has a Business Certificate of Enterprise as a legal person, and it intends
to use the disputed domain name for a new machine whose core technology relates
to an electron tube. It is not
therefore in competition with Complainant.
Respondent has filed an application for the registration of YOUTUBE as
trademark in China
which was accepted on December 21, 2007.
Respondent contends that this demonstrates its intention to use the name for a bona fide offering of goods and so it
has a legitimate right and interest in the disputed domain name.
·
When
Respondent acquired the disputed domain name from its previous owner, Jason
Chou, it was unaware that Complainant had previously sent demand letters and it
first learned of this upon receiving the Complaint.
It was this previous owner who posted the pornographic content on the site.
·
Respondent
is intending to use the website at the disputed domain name for machinery related
content and so cannot be accused of attempting to attract users to the site for
commercial gain by creating a likelihood of confusion with Complainant’s mark.
·
Complainant
stands accused of reverse domain name hijacking.
It registered its domain name <youtube.com> in 2005 but did not register
any other “youtube” domain names. It
only requested the transfer of the disputed domain name 3 years later. Complainant has no trademark rights in China and there is no evidence that it plans to
do business in China. But Respondent applied to register YOUTUBE as a
trademark before receiving the Complaint.
C. Additional Submissions
Both parties filed Additional Submissions.
Complainant
In response to Respondent’s various assertions, Complainant states as
follows –
The YOUTUBE trademark is not protectable
Complainant refers to previous Decisions under the Policy, in which Panels
have found that Complainant has established rights in its YOUTUBE trademark and
that this is both well-known and distinctive.
Apart from which, since Respondent has himself filed an application in China for
YOUTUBE, he clearly accepts that the word is distinctive.
Complainant does not have any rights in the trademark YOUTUBE in China Complainant points out that it is well
established that, under the Policy, this is not necessary.
Nevertheless, Complainant’s International registration dates from March 1,
2006, and the Chinese authorities were notified of the application on October
19, 2006. These dates were both
prior to Respondent’s acquisition of the disputed domain name. Complainant also provided proof that the extension
of this mark to China
has now been registered by the Chinese authorities as from January 22, 2008.
Complainant has not adequately shown its rights in the trademark
Complainant now produces a copy of a Deed dated July 24, 2007 in which
various trademarks, including YOUTUBE, are assigned by YouTube LLC to itself. In any case, It is well
established, under the Policy, that a parent corporation has and may enforce
rights in the trademarks of its wholly owned subsidiary.
The disputed domain name precedes the date when Complainant’s trademark
was extended to China
Again, it is well established that, under the Policy, where a domain
name has had multiple owners, the date when the current owner acquired the name
controls all aspects of the UDRP proceeding and not the date of its
registration to a previous party.
Complainant lists the dates when the various parties owned the disputed domain
name, and asserts that the earliest date when Respondent could be said to have
owned the name was September 30, 2007.
Respondent’s Chinese trademark application
As can be seem from the Complaint, Respondent is just one in a long
chain of fake names adopted to frustrate Complainant’s legitimate complaint. It new claim that it has a nebulous plan to use
the name for machinery should be ignored.
The content of the website at the disputed domain name belies Respondent’s
claim of innocence or that this content was the responsibility of the previous
owner. The printouts put in evidence
by Complainant, all of which display pornographic content, are all dated after
Respondent acquired the disputed domain name.
Moreover, Respondent’s Chinese trademark application cannot cleanse its bad
faith as both he and his predecessors have long been on notice of Complainant’s
rights in the name YOUTUBE. A
trademark filing, of itself, does not demonstrate a preparation to use a domain
name in connection with a bona fide
offering of goods or services.
Reverse Domain Name Hijacking
In order to prove reverse domain name hijacking, a Respondent must show
that Complainant knew either of Respondent’s unassailable right to the disputed
domain name, or of his clear lack of bad faith
registration and use yet still brought the complaint in bad faith. Respondent has made no such allegations and
Complainant is in fact only trying to enforce its rights in the famous YOUTUBE
trademark against a domain name used for a pornographic site.
Respondent
The only new points from Respondent’s Additional Submission are as
follows –
·
The
Panel should make its decision pursuant to the Policy so the various cases
referred to by Complainant should not be taken as supporting the Complaint.
·
The
owner of the trademark YOUTUBE in China is YouTube, LLC and not
complainant.
·
YOUTUBE
has not been recognised as a well-known mark by the Chinese authorities, which
means that any application in a class for which it is not registered is
acceptable. Respondent’s application
dated prior to this Complaint proves that Respondent has not been acting in bad
faith.
·
In March
2003 in the course of a Complaint under the Rules existing in China at that
time, the domain name <google.com.cn> was ordered not to be transferred by the
authorities, because the registration date of the relevant trademark was later
than the registration date of the relevant domain name.
The same circumstances exist in this case also.
·
The name
YouTube cannot be famous in China
because of the various limitations and restrictions on the broadcasting of
online video in China.
·
Documents
filed in evidence by Complainant whose origin is either Alexa.com or Compete.com cannot be impartial or independent because
they, like Complainant, are Internet search engines.
PRELIMINARY ISSUES
There are several Preliminary Issues to be decided before coming to any
Decision in this case.
Relevant Registration Date of the Disputed Domain Name
The parties differ over the date on which the
disputed domain name was registered.
The name was originally registered on August 14,
2005 which was several months after Complainant’s subsidiary, YouTube LLC, was
formed so it is certainly possible that by this time the name had already acquired
some credence, even in China, although perhaps not its current notoriety. The domain name registration has gone through
several changes of ownership since registration and, in the Complaint,
Complainant details the various attempts it went through in an effort to
negotiate a transfer, only to be frustrated by, for example, an apparent inability
of one of the owners to speak or understand English, or the transfer of the
name to “a friend,” and several changes in ownership.
Complainant has provided copies of the WHOIS
record for the disputed domain name which show three changes in ownership since
September 16, 2007. The current
owner is YiWuShi
Shuangfeng Jixie Youxian Gongsi c/o Huang Jian.
This organisation was recorded as the owner on March 4, 2008 and perhaps that
is the date which the Panel should treat as the relevant date of the disputed
domain name. However Complainant
points out that the said Huang Jian himself owned the name outright for a time,
having apparently acquired it on September 30, 2007, and Complainant asks the
Panel to take September 30, 2007 as the earliest possible date upon which the
disputed domain name came into the possession of Respondent. The Panel agrees that this is probably the true
relevant date since Huang Jian – the previous outright owner – is now the joint
owner with YiWuShi Shuangfeng Jixie Youxian Gongsi – the current owner.
Respondent vigorously disputes this, and insists that
the true date is August 14, 2005, which is when the disputed domain name was
first registered. There have been a
number of decisions under the Policy on this point.
For example, in BWR Resources
Ltd. v.
Waitomo Assoc. Ltd.,
D2000-0861 (WIPO Oct. 4, 2000) it was found that registration refers to the
date when the respondent acquired the name from the person who first registered
it; see also Sidestep, Inc.
v. WebQuest.com,
Inc., D2007-0549 (WIPO June 8,
2007) in which it was found that the relevant date of registration for the
disputed domain name was the date on which the respondent became the
registrant, not the date on which the domain name was first created and
registered to another party); see also Gewista-Werbegesellschaft mbH v. Unasi Inc., D2005-1051 (WIPO November 22, 2005) where
it was said: “[H]aving reviewed
earlier decisions of panels, the Panel believes, that the fact, that the
Respondent did not register the disputed domain name itself but acquired it
from the previous owner, does not mean that the Respondent has not ‘registered’
the Domain Name within the meaning of the Policy since there is no reason to
differentiate between a direct registration and registration after transfer. The domain name at issue was in fact “registered”
within the meaning of the Policy when it had been acquired by the Respondent [from
a prior registrant].”
Moreover, it was held in Javacool Software Dev., LLC v.
Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2,
2007) that a complainant need not show that its rights in its mark predate the
respondent’s registration of the disputed domain name in order to satisfy
paragraph 4(a)(i) of the Policy; see also
CDG v. WSM Domains, FA 933942 (Nat. Arb. Forum May 2, 2007) in which it was said that “A plain reading of ¶ 4(a)(i) imposes no burden on a Complainant to
demonstrate that it has either exclusive right to a mark or that such rights
predate the registration of a domain name.”
The Panel has therefore concluded
that, in this case, it will treat September 30, 2007 as the relevant date of
the disputed domain name.
Previous
Decisions are Irrelevant
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.” However Respondent has contended that the Panel should
make its Decision without reference to any previous decisions that may have
been taken under the Policy. To do
so would, in the opinion of the Panel, fly in the face of the practice
established by the hundreds of thousands of cases already decided under the
Policy. Most Panels – and this Panel
is no exception – treat previous decisions as a guide, rather than a precedent. Thus if the prevailing view from a number of
earlier decisions under the Policy is in one direction, then it is right that
one or more of the decisions in support of that view should be referred to.
In 2005 the World Intellectual Property Organisation published its
“Overview of WIPO Panel Views on Selected UDRP Questions” and in the
introduction to this document it states: “ … neither this
overview nor prior panel decisions are binding on panellists, who will make
their judgements in the particular circumstances of each individual; proceeding. Also it remains the responsibility of each case
party to make its own independent assessment of decisions relevant to its case.” In
the present instance, the Panel does not deviate from this view, and will refer
to past decisions where appropriate.
Is the trademark YOUTUBE protected
in China,
and is it owned by Complainant?
Respondent has repeatedly claimed that the trademark YOUTUBE does not
belong to Complainant, and it is true that some of the
certificates put in evidence do still display the name of the original owner, YouTube
Inc. However Complainant has
provided clear evidence that it has taken an assignment of all the YOUTUBE
trademarks (as well as some others) from YouTube LLC who is the successor to YouTube
Inc. and, although in some instances
this transfer of ownership may not yet have been recorded, the Panel is well
aware that recordal can take an inordinate length of time in some countries. Respondent has also suggested that the assignment
document should not be accepted because they have not been officially witnessed
by, for example, a notary, or an Embassy.
The Panel is also aware that this is a necessity in some countries but there is
no such requirement under the Policy or the Rules.
The Panel is therefore quite happy to take the evidence provided as clear proof
that the trademark is currently owned by Complainant even if all the official records
do not yet show this.
Respondent has also challenged Complainant’s rights to the trademark in
China, but an application
has been made to extend the International Registration to China, and
indeed Complainant has, in its Additional Submission, provided proof that this
extension is now registered. The
Panel therefore accepts that Complainant owns a valid registration of the
trademark YOUTUBE in China.
Finally, the fact that Complainant may not have applied to operate in China is not
relevant.
Reverse Domain Name
Hijacking
Respondent has leveled a charge of reverse domain
name hijacking against Complainant.
For example, it claims that Complainant has taken 3 years before
launching an action against the disputed domain name,
it has no trademark rights in China,
and has no plans to operate any business in China.
On the other hand, Respondent has a legitimate business in China and registered its trademark YOUTUBE in China before
receiving the Complaint. It could
therefore be argued that Complainant knew or should have known that it was unable to prove
that Respondent lacked rights or legitimate interests in the disputed domain name and that
Respondent registered and is using the disputed domain name in bad faith.
In Mirama Enters. Inc. v.
NJDomains, Abuse Contact: abuse@mail.com,
FA 588486 (Nat. Arb. Forum Jan. 16, 2006) it was found that the complainant had
engaged in reverse domain name hijacking where it had commenced the proceeding
despite possessing knowledge of the respondent’s rights in the disputed domain
name. Also, in Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO March 19, 2002) it
was held that “To establish reverse
domain name hijacking, Respondent must show knowledge on the part of the Complainant
of the Respondent’s right or legitimate interest in the Domain Name and
evidence of harassment or similar conduct by the Complainant in the fact of
such knowledge.”
According to the Rules, reverse domain name
hijacking means “using the Policy in bad
faith to attempt to deprive a registered domain-name holder of a domain name.”
The above catalogue of charges hardly amounts to bad faith on the part of
Complainant. As Complainant says, all it is trying to do is to enforce its
rights in the YOUTUBE trademark – which it alleges is famous – against an identical
domain name which is being used to peddle pornography.
As pointed out above, the disputed domain name was registered only some time after
the ‘YouTube’ website had become an Internet phenomenon.
In Watson
Pharm., Inc. v.
WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) the
respondent’s assertion of reverse domain name hijacking was rejected because
there was no evidence that the complainant was using the Policy other than to
declare its rights.
The Panel has concluded that there is nothing to suggest
that Complainant has been acting in bad faith, and so dismisses the charge of
reverse domain name hijacking.
DISCUSSION AND FINDINGS
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.
Identical and/or Confusingly Similar (4(a)(i)
The Panel has already established that it is
Complainant who owns the trademark YOUTUBE in China, not its predecessor. It is well established under the Policy that the
mere ownership of an earlier trademark right is sufficient for a Complainant to
establish his rights. See, for
example, Janus Int’l. Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) in which it was said "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 Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) in which it was found that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under paragraph 4(a)(i) of the Policy.
Respondent has also alleged that it is in China, so Complainant should have rights
in the YOUTUBE trademark because that is where Respondent resides. However the
Panel has already established above that Complainant does have rights in the
YOUTUBE in China,
and in any case there is nothing in the Policy or Rules which require a complainant
to hold a trademark registration in a respondent’s country of origin. It is sufficient for Complainant to hold a
trademark registration with an appropriate governmental authority to establish
rights in the mark. The Panel was the panelist in Renaissance
Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) and held that
it does not matter whether the complainant has registered its trademark in the
country in which the respondent resides, only that it can establish rights in
some jurisdiction. See also Williams-Sonoma, Inc. v.
Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) in which it was found that
it is irrelevant whether the complainant has registered its trademark in the
country of the respondent’s residence.
Respondent
has a trademark registration of YOUTUBE in China,
and alleged
that it has every right to register this trademark for goods or services that
differ from those of Complainant because Complainant’s trademark YOUTUBE has
not yet been recognised as a well-known mark in China.
However in most jurisdictions, including China, the similarity test is
whether or not the goods and services of a competing trademark are identical or
confusingly similar, so it is irrelevant whether YOUTUBE is or is not a well-known
mark.
There
is absolutely no doubt about the identicality of Complainant’s trademark
YOUTUBE with the disputed domain name apart, of course, from the addition of
the generic
top-level domain “.net.” However it is well established under the Policy that
this addition is insignificant. See Katadyn N. Am. v. Black Mountain
Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) in which it was said that
“the addition of the generic top-level
domain (gTLD) ‘.net’ is irrelevant
for purposes of determining whether a domain name is identical to a mark[;]” also, in Honeywell
Int’l. Inc. v.
r9.net, FA 445594 (Nat. Arb.
Forum May 23, 2005) the respondent’s <honeywell.net>
domain name was found to be identical to the complainant’s HONEYWELL mark.
The Panel therefore finds that Paragraph 4(a)(i) is
proved.
Rights or Legitimate Interests (4(a)(ii)
It is well established that once Complainant
has made out a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name, then the burden shifts to
Respondent to show it does have such rights or legitimate interests. For example it was held in Hanna-Barbera Productions, Inc. v.
Entertainment Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) that the complainant must first make
a prima facie case that the respondent lacks rights and legitimate
interests in the disputed domain name under paragraph 4(a)(ii) of the Policy
before the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
In this case Complainant has made a very clear prima facie case so the
burden shifts to Respondent, something which, in the opinion of the Panel, he
has signally failed to shoulder.
Respondent has challenged the admissibility of
some of the documentation supplied by Complainant, claiming that it is biased
because it comes either from one of Complainant’s subsidiaries or from
organisations which operate in a similar way to Complainant. In the Panel’s opinion this claim is ridiculous
and can be dismissed. There is no
doubt about Complainant’s integrity.
Complainant contends that
Respondent is not commonly known by the disputed domain name, and this is true because the WHOIS
information identifies Respondent as “YiWuShi Shuangfeng Jixi Youxian Gongsi
c/o Huang Jian.” Furthermore, there
is no mention of the YOUTUBE mark being Respondent’s name or nickname, neither
is there any indication that Respondent is, or ever has been, licensed or
authorized to use the trademark YOUTUBE.
Respondent is using the disputed domain name to
feature links to sources for online video content of a pornographic nature. Respondent claims that this content was not his
responsibility but was placed there by the previous owner of the domain name. Not only does this seem highly unlikely, but if
Respondent wished to replace the offer to supply pornographic videos with
information about his alleged tube manufacture, he had at least five months to
do so, but he took no action. In any
case, it hardly matters who might have been responsible.
The fact is that the site contained pornographic content at the time of the
Complaint, and Respondent must take responsibility for this.
Furthermore Respondent presumably continues to profit
from the website through the accrual of click-through fees, and by revenue from
advertising. This use of the
disputed domain name is in competition with Complainant’s business, which is to
offer online video content on its websites at <youtube.com>
and <youtube.org>.
In the opinion of the Panel, Respondent’s use is
neither a bona fide offering of goods
or services under paragraph 4(c)(i) of the Policy, nor a legitimate
noncommercial or fair use under paragraph 4(c)(iii) of the Policy.
In Am. Int’l. Group, Inc. v.
Benjamin, FA 944242 (Nat. Arb.
Forum May 11, 2007) it was found that the respondent’s use of a confusingly
similar domain name to advertise real estate services which competed with the
complainant’s business did not constitute a bona
fide offering of goods or services under paragraph 4(c)(i), or a legitimate
noncommercial or fair use under paragraph 4(c)(iii)).
Likewise, in Tesco Personal Finance Ltd. v.
Domain Mgmt. Services, FA
877982 (Nat. Arb. Forum
Feb. 13, 2007) it was found that the respondent was not using the
<tesco-finance.com> domain name
in connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use by maintaining a web page with misleading
links to the complainant’s competitors in the financial services industry.
The website at the domain name advertises and displays adult-oriented videos and
content. This too is neither a bona fide offering of goods or services under paragraph 4(c)(i),
nor a legitimate noncommercial or fair use under paragraph 4(c)(iii). In America Online, Inc. v. Boch, FA 209902 (Nat. Arb.
Forum Dec. 22, 2003) it was said that “Respondent
uses <aol-x.com> in connection
with [adult-oriented] material, which is not a bona fide offering of goods or
services, nor a legitimate noncommercial or fair use of the domain name,
pursuant to Policy ¶¶ 4(c)(i) [and] (iii)[;]” and in Yahoo! Inc. v.
Zuccarini, FA 183997 (Nat. Arb. Forum Oct.
20, 2003) it was said that “Respondent's
use of the disputed domain names to redirect Internet users to [adult-oriented]
websites, where the names were selected specifically for the purpose of trading
on the goodwill of Complainant's marks, cannot qualify as a bona fide offering
of goods or services or as a legitimate noncommercial or fair use of the names
under the Policy.”
Respondent has a trademark registration in China
for YOUTUBE in Class 7 for machinery-related products which,
it claims, is proof of a demonstrable preparation to use the disputed domain name to provide a bona fide offering of goods or services. However, as Complainant has pointed out, there is
no evidence to support this vague assertion and furthermore, the trademark
application was actually filed after Respondent had received
Complainant’s cease-and-desist letter.
It was found in Household Int’l.,
Inc. v.
Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) that the
respondent’s “vague and unsupported
assertion of ‘plans to sell household goods, supplies and appliances over the
Internet’” was insufficient to be considered proof of a legitimate business
plan. Also, in Grand Lodge Fraternal Order of Police v. Scott, FA 798845 (Nat. Arb. Forum
Oct. 30, 2006) it was found that the respondent's trademark application filed
after the complainant sent a cease-and-desist letter to the respondent did not
create rights or legitimate interests in the disputed domain name.
The Panel therefore finds that Paragraph 4(a)(ii)
is proved.
Registration and Use in Bad Faith (4(a)(iii)
Complainant sent cease-and-desist
letters to some of the previous registrants of the disputed domain name, as well as to
Respondent. Complainant believes
there is a connection between these previous registrants and Respondent, and
that continually transferring the disputed domain name was a ploy to circumvent
the Policy. The Panel has some
sympathy with this suggestion, but there is no proof.
However it is a fact that by the time Respondent acquired the disputed domain
name, Complainant’s YOUTUBE mark had achieved such worldwide fame that
Respondent must have known about Complainant’s rights in the mark, and that the
name was distinctive of Complainant.
His argument that the mark is not distinctive is negated by the fact that
Respondent himself proceeded to file an application to register YOUTUBE as a
trademark in China. In Bluegreen Corp. v.
eGo, FA
128793 (Nat. Arb. Forum Dec. 16, 2002) bad faith was found
where the method by which the respondent acquired the disputed domain names
indicated that the respondent was well aware that the domain names incorporated
marks in which the complainant had rights.
Also, in Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) it was found that the respondent had
actual and constructive knowledge of the complainant’s EXXON mark given the
worldwide prominence of the mark and thus the respondent registered the domain
name in bad faith.
Additionally, the pornographic content of the
site is evidence of bad faith. In Wells Fargo &
Co. v.
Party Night Inc., FA 144647 (Nat. Arb.
Forum March 18, 2003) it was found that the
respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith, and in Microsoft Corp. v.
Horner, D2002-0029 (WIPO Feb.
27, 2002) it was held that the respondent’s use of the complainant’s mark to
post adult-oriented photographs and to publicize hyperlinks to additional
adult-oriented websites evidenced bad faith use and registration of the domain
name.
The Panel cannot accept
Respondent’s denials that he was not responsible for the adult material on the
site, and has said so above. In any
case, it was said in Express Scripts, Inc.
v. Windgather Invs. Ltd.,
D2007-0267 (WIPO Apr. 26, 2007) that
“The Respondent
contends that the advertisements in this case were ‘generated by the parking
company’. The implication is that
the Respondent was not responsible for the content of these advertisements. This may well be correct but in the panel’s view
this makes no difference.”
The Panel therefore finds that Paragraph 4(a)(iii)
is proved.
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 <youtube.net>
domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: May 5, 2008
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