Google Inc. v. Domain Administrator m.dowdell@unholdings.com
Claim Number: FA1111001416796
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is Domain Administrator m.dowdell@unholdings.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2011; the National Arbitration Forum received payment on November 23, 2011.
On November 23, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@youtbe.com, postmaster@youtub.com, postmaster@youtue.com, postmaster@youube.com, and postmaster@yutube.com. Also on November 23, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names are confusingly similar to Complainant’s YOUTUBE mark.
2. Respondent does not have any rights or legitimate interests in the <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names.
3. Respondent registered and used the <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., acquired YouTube, LLC in 2006, and the trademark rights to the YOUTUBE mark were assigned to it in 2007. YOUTUBE was launched in April of 2005. Complainant submits a trademark registration that it owns with the United States Patent and Trademark Office ("USPTO") for the YOUTUBE mark (Reg. No. 3,525,802 filed January 30, 2006).
Respondent, Domain Administrator m.dowdell@unholdings.com, registered the <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names on August 14, 2005. Respondent’s domain names redirect Internet users to the third-party website <visitorsurvey.com>, which uses Complainant’s mark and logos in the administering of a survey that promises a $1,000 gift card upon completion.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence to show that it has registered the YOUTUBE mark with multiple trademark authorities, including those with the USPTO for the YOUTUBE mark (Reg. No. 3,525,802 filed January 30, 2006). The Panel finds that such evidence establishes Complainant’s rights in the YOUTUBE mark that date back to its filing date with the USPTO on January 30, 2006. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
The Panel notes that Complainant asserts that it and its subsidiary/predecessor have “used the YOUTUBE Mark in commerce continuously since the launch of the YOUTUBE service in April 2005.” Complainant submits a screen shot from its <youtube.com> website identifying a “timeline” of its existence. This “timeline” identifies February 2005 as the founding of YOUTUBE; the first video upload in April of 2005; the Beta launch of the website in May 2005; the enabling of embedding of YOUTUBE on other websites in June of 2005; and the official website launch in December of 2005. Complainant also supplies several news articles about its mark and website, the earliest being dated October 27, 2005, which talks about YOUTUBE and other “startup” video uploading websites. Respondent has not come forward to contest this timeline of events, or to argue that Complainant does not have rights in the mark. Therefore, the Panel finds that Complainant has common law rights in its mark that predate its trademark filings with the USPTO. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”).
Complainant argues that the <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names are confusingly similar to Complainant’s YOUTUBE mark. Complainant notes that the domain names all contain misspelled versions of its YOUTUBE mark that simply remove letters from the mark while adding the generic top-level domain (“gTLD”) “.com.” The Panel agrees with Complainant and finds that Respondent’s domain names are confusingly similar to Complainant’s mark under 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 Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); 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.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). In order to satisfy the Policy, a complainant must establish a prima facie case in support of its allegations. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). The Panel finds that Complainant has submitted a prima facie case in support of its allegations under Policy ¶ 4(a)(ii), thereby shifting the burden of proof to Respondent. However, Respondent’s refusal to respond to these proceedings allows the Panel to accept as true all of Complainant’s arguments that are not clearly contradicted by the evidence on record. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Nonetheless, the Panel will continue to evaluate the evidence on record in making its determinations under Policy ¶ 4(c).
Complainant argues that Respondent is neither commonly known by the disputed domain names nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information identifies “Domain Administrator m.dowdell@unholdings.com” as the registrant of the disputed domain names, and there is no further evidence on record that Respondent is commonly known by the disputed domain names. The Panel finds that, without evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that the <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names all redirect Internet users to a survey website located at <visitorsurvey.com>. Complainant argues that the resolving website requests Internet users to complete a “brief survey” with the promise of providing them with a $1,000 gift card. Complainant further contends that those Internet users are then “tricked” into providing their “email address, mailing address, cell phone number, and date of birth, and are then signed up for recurring text message plans at a monthly charge and other unwanted services.” Complainant claims that such use shows that Respondent is engaged in a phishing scheme through this use for its own financial gain. The Panel agrees and finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Lastly, Complainant asserts that Respondent’s registration of the <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names is an example of typosquatting and is further evidence of Respondent’s lack of rights and legitimate interests in the domain names. The Panel agrees and finds that Respondent’s registration of domain names containing common misspellings of Complainant’s mark constitutes typosquatting and is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has argued and proven that Respondent’s domain names all resolve to a website which asks users to complete a “brief survey” with the promise of providing them with a $1,000 gift card. Complainant further contends that those Internet users are then “tricked” into providing their “email address, mailing address, cell phone number, and date of birth, and are then signed up for recurring text message plans at a monthly charge and other unwanted services.” The Panel here presumes that Respondent receives commercial benefit from such use. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Privacy Protect, FA 1404667 (Nat. Arb. Forum Sept. 30, 2011) (finding Policy ¶ 4(b)(iv) bad faith registration and use when a disputed domain name resolves to a website that offers visitors gift cards in exchange for completing surveys and providing personal information); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant argues that Respondent is using the disputed domain names in order to acquire personal information from Internet users in a phishing scam. Respondent has not come forward to refute this claim. Therefore, the Panel finds that phishing, in and of itself, is also evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Lastly, the Panel has already determined that Respondent engaged in the practice of typosquatting through its registration of the <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names. This is also evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtbe.com>, <youtub.com>, <youtue.com>, <youube.com>, and <yutube.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 5, 2012
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