Google Inc. v.
Claim Number: FA0806001212995
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 <youtubes.com>, registered with Budgetnames.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Karl V. Fink, Paul M. DeCicco, and David E.
Sorkin as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 27, 2008; the
National Arbitration Forum received a hard copy of the Complaint on July 1, 2008.
On July 3, 2008, Budgetnames confirmed by e-mail to the National
Arbitration Forum that the <youtubes.com> domain name is
registered with Budgetnames and that the
Respondent is the current registrant of the name. Budgetnames
has verified that Respondent is bound by the Budgetnames
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 July 7, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 28, 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@youtubes.com by e-mail.
A timely Response was received and determined to be complete on July 28, 2008.
On August 1, 2008, a timely Additional Submission was received from
Complainant and determined to be complete and in compliance with Supplemental
Rule 7.
On August 6, 2008, a timely Additional Submission was received from
Respondent and determined to be complete in compliance with Supplemental Rule
7.
On August 13, 2008, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Karl V. Fink, Paul M. DeCicco, and David E. Sorkin as
Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant and its predecessor-in-interest have provided online video
services through the popular website YouTube since 2005. Complainant contends that its predecessor registered
the domain name <youtube.com> on February 15, 2005, and that since at
least as early as April 24, 2005, its services have been provided under the
YOUTUBE Mark. Complainant claims
common-law rights in this mark, has an application for registered rights
pending before the U.S. Patent and Trademark Office, and has registered the
mark in various other countries.
Complainant asserts that the disputed domain name, <youtubes.com>, registered on November 2, 2005, is
confusingly similar to its YOUTUBE mark.
Complainant further contends that Respondent lacks rights and
legitimate interests in the disputed domain name. In support thereof, Complainant states that
the domain name currently resolves to a website containing links to other
commercial websites; that Respondent presumably receives income from these
links; and that such use is neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name. Complainant
further alleges that Respondent is not commonly known by the domain name, and
has not been licensed or authorized to use Complainant’s YOUTUBE mark.
Finally, Complainant contends that Respondent registered and is using
the disputed domain name in bad faith.
Complainant asserts that its YOUTUBE mark is fanciful, unique, and
widely known; that it was so prior to the date on which the disputed domain
name was registered; that Respondent has no legitimate, good faith reason to
use the word “youtube” in a domain name; that Respondent’s use of the domain
name for a website featuring pay-per-click advertisements and links is in bad
faith; that these advertisements and links are related to or directly
competitive with the services offered by Complainant under its YOUTUBE mark;
that Respondent has registered many other domain names corresponding to
trademarks, including other trademarks owned by Complainant; and that
Respondent is a “recidivist cybersquatter,” citing various previous decisions
under the Policy involving Respondent.
B. Respondent
Respondent denies that the disputed domain name is confusingly similar
to Complainant’s claimed mark, on the basis that there is a crowded field of
parties using some combination or variation of the terms “you” and “tube,” and
as a result consumers are unlikely to be easily confused by the similarity
between <youtubes.com> and
YOUTUBE.
Respondent further contends that its use of the disputed domain name
for a click-through site represents a bona
fide offering of goods and services, on the grounds that its use is not
tainted by bad faith. Respondent denies
that it has control over the contents of the advertisements that appear on the
website, and states that there is no intent to target Complainant.
Finally, Respondent denies that it registered or has used the disputed
domain name in bad faith. Respondent states
that it was unaware of Complainant when it registered the domain name, and
absent such actual knowledge it cannot be found to have registered the name in
bad faith. Respondent notes that
Complainant does not have a federally registered mark in the
C. Additional Submissions
Both parties’ Additional Submissions merely reiterate and respond to
arguments that appear in the initial submissions, and neither contains any
statement identifying any exceptional circumstances warranting consideration of
Additional Submissions. The Panel
therefore declines to consider the substance of the parties’ Additional Submissions.
FINDINGS
The Panel finds that Complainant has rights
in the YOUTUBE mark; that the disputed domain name <youtubes.com> is confusingly similar to this mark; that
Respondent lacks rights and legitimate interests in respect of the disputed
domain name; and that Respondent registered and is using the disputed domain
name in bad faith.
DISCUSSION
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.
The disputed domain name is identical to
Complainant’s YOUTUBE mark, but for the addition of the letter “s” at the end,
presumably signifying a plural form, and the generic “.com” top-level domain
suffix. While a greater degree of
similarity may well be required in a “crowded field,” as Respondent argues, the
Panel nonetheless finds that the disputed domain name in this case is
confusingly similar to Complainant’s mark.
Respondent is not commonly known by the
domain name, has not been authorized by Complainant to use its YOUTUBE mark,
and is using the domain name for a website that displays pay-per-click
advertising links that, Complainant alleges, target Internet users seeking
Complainant’s mark. Complainant has made
a prima facie showing that Respondent
lacks rights and legitimate interests in respect of the disputed domain name. The burden of production thus shifts to
Respondent to come forward with concrete evidence of its rights or legitimate
interests. See, e.g., GMAC LLC v. WhoisGuard Protected, FA 942715 (Nat. Arb.
Forum May 9, 2007). Respondent, in turn,
contends that it has such rights or interests because it is using the domain
name solely in a generic or descriptive sense.
As Respondent correctly notes, whether its
use of the disputed domain name for a website containing pay-per-click
advertisements constitutes a bona fide
use giving rise to rights or legitimate interests turns on whether such use is
tainted by bad faith. The second element
in this case therefore turns upon the Panel’s resolution of the third element.
Respondent’s current use of the disputed
domain name seems fairly clearly targeted at Complainant and its mark,
supporting an inference of bad faith use under paragraph 4(b)(iv)
of the Policy. Complainant also must
show that the original domain name registration was targeted at Complainant or
its mark. As Respondent notes, this
requires the Panel to find that Respondent had actual knowledge of YouTube at
that time. Such a finding may be inferred
from circumstantial evidence. See, e.g., Nutri/System IPHC, Inc. v.
Vabalon, No. D2008-0288 (WIPO Apr. 14, 2008); Promatic International Ltd. v. Name Admin. Inc., D2006-0673 (WIPO July 19, 2006).
In the view of the Panel, the circumstantial
evidence in this case tends to support an inference that Respondent was indeed aware
of YouTube when it registered the disputed domain name, and that it registered
(and subsequently used) the name intending to exploit its similarity to
Complainant’s mark, and to capitalize upon the promotion and goodwill created
by Complainant and its predecessor. Respondent’s
contention that it selected the domain name for some purported generic meaning,
without any awareness of the manner in which the singular form of the domain
name was then being used, strains credulity.
The Panel also notes that the registration occurred only a few months
after YouTube’s public preview, and at a time when YouTube began to enjoy
widespread publicity. Furthermore,
Respondent has a history of trading on the trademarks of others, and while some
of Respondent’s domain name registrations have not been found to have been in
bad faith, the evidence more than suffices to establish a pattern of bad faith
registration under paragraph 4(b)(ii). For all of these reasons, the Panel finds
that Respondent registered and is using the disputed domain name in bad faith.
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 <youtubes.com> domain name be TRANSFERRED
from Respondent to Complainant.
David E. Sorkin, Presiding Panelist
Karl V. Fink, Panelist
Paul M. DeCicco, Panelist
Dated:
August 25, 2008
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