Google Inc. v. PrivacyProtect.org (alias Jean Marie Bergeron; BGSR Media Systems SA / Raul Gomez; Media Enseguida SA / Juan Martin Vega; Integrated Media Services SA / Gerado Gilbrano; Bocas Grande Systems SA / Domain Admin)
Claim Number: FA1202001428476
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is PrivacyProtect.org (alias Jean Marie Bergeron; BGSR Media Systems SA / Raul Gomez; Media Enseguida SA / Juan Martin Vega; Integrated Media Services SA / Gerado Gilbrano; Bocas Grande Systems SA / Domain Admin) (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names are <tyoutube.com>, <youstube.com>, <youtbue.com>, <youttube.com>, <youtubenaruto.com>, <youtubr.com>, <youtubube.com>, <youtubve.com>, <youtune.com>, <yoututbe.com>, <youtuube.com>, <youyube.com>, and <yutub.com>, registered with Power Brand Center Corp.
The undersigned certify 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.
Debrett G. Lyons, Hugues G. Richard and John Upchurch as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2012; the National Arbitration Forum received payment on February 8, 2012.
On February 14, 2012, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the disputed domain names have been placed under Registrar-Lock and the Privacy Protection has been removed pending the outcome of this action. The Registrar also confirmed that the contact information for these domain names is accurate and has been verified per ICANN rules. The Registrar provided the current WHOIS information and original registration dates as listed in its records. The Registrar confirmed that the UDRP policy applied to these domain names as per ICANN rules.
On February 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registrations as technical, administrative, and billing contacts, and to postmaster@tyoutube.com, postmaster@youstube.com, postmaster@youtbue.com, postmaster@youttube.com, postmaster@youtubenaruto.com, postmaster@youtubr.com, postmaster@youtubube.com, postmaster@youtubve.com, postmaster@youtune.com, postmaster@yoututbe.com, postmaster@youtuube.com, postmaster@youyube.com, and postmaster@yutub.com.
Also on February 21, 2012, 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 registrations as technical, administrative and billing contacts.
Having received no response from Respondent, nor from the persons listed on Respondent’s registrations as technical, administrative and billing contacts, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2012, Complainant requested to have the dispute decided by a three-member Panel. The National Arbitration Forum appointed Debrett G. Lyons, Hugues G. Richard (Presiding Panelist) and John Upchurch as Panelists.
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
The correct Respondent in this case is PrivacyProtect.org.
Complainant’s predecessor-in-interest registered the <youtube.com> domain name on February 14, 2005 and began using the YOUTUBE mark in April 2005.
Complainant acquired its predecessor-in-interest, along with all rights in the YOUTUBE mark, in 2006 and 2007.
Complainant owns common law rights in the YOUTUBE mark dating back to April 2005.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its YOUTUBE mark (e.g., Reg. No. 3,525,802 filed January 30, 2006, based on first use in commerce as of April 24, 2005 and registered October 28, 2008).
Complainant owns trademark registrations with IP Australia (“IPA”) for its YOUTUBE mark (e.g., Reg. No. 897,049 registered March 1, 2006).
Respondent registered the disputed domain names no earlier than November 3, 2005.
All of the disputed domain names are confusingly similar to Complainant’s YOUTUBE mark.
The disputed domain names resolve to a website offering an expensive technology product in exchange for Internet users providing personal information, entering contests, signing up for texting plans, and downloading an adware toolbar.
Respondent is engaging in a phishing scheme.
Respondent is not commonly known by the disputed domain names.
Respondent is guilty of typosquatting.
The website resolving from the disputed domain names mirrors the overall look and feel of Complainant’s <youtube.com> website.
Respondent had actual and constructive knowledge of Complainant’s YOUTUBE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The findings pertinent to the decision in this case are that the founders of YouTube began using the YOUTUBE trademark in April 2005 and registered the <youtube.com> domain name in February 2005. The Complainant acquired YouTube, LLC in 2006 and in 2007, YouTube, LLC assigned its trademarks, including the YOUTUBE trademark, to the Complainant.
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 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 names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain name has been registered and is being used in bad faith.
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[1].
Preliminary Issue: Multiple respondents
In the instant proceedings, Complainant has alleged that the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that Respondent, PrivacyProtect.org, is the correct Respondent in this proceeding. To that effect, Complainant contends that Respondent, PrivacyProtect.org, registers disputed domain names for its customers and lists its own information as the registrant’s in an effort to evade ICANN regulations. Respondent is also said to refuse to accept postal or e-mail communications, which prevents mark owners from raising concerns regarding domain names. Previous UDRP panels have agreed with Complainant’s analysis. In Baylor Univ. v. Moniker Privacy Servs., FA 1361618 (Nat. Arb. Forum Jan. 17, 2011), the Panel held Moniker to be the Respondent since:
(1) as a corporate entity, it listed itself as the registrant of the domain names on the Whois record;
(2) it concealed its customers by refusing to give up their identities or otherwise investigate when Complainant notified it of potential trademark violations; and
(3) it forced Complainant to expend considerable unnecessary expense to enforce its rights.
The Panel finds that the Respondent is in a very similar situation than Moniker in that arbitration proceeding. Complainant also cites various cases that named Respondent, PrivacyProtect.org, as the respondent and ordered transfer of the disputed domain names[2].
The fact that the Registrar promptly released the privacy shield and provided the Forum with the public WHOIS record with details about its customer(s) when the domain name dispute was filed is not sufficient for the Panel to conclude that more than one Respondent should be involved in the present case. Since the disputed domain names all resolve to the same website and are all registered with the same Registrar, the Panel finds that this information is sufficient to find that Respondent, PrivacyProtect.org, is the single entity controlling the disputed domain names.
In the absence of any evidence to the contrary, the Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings treating PrivacyProtect.org as the proper Respondent.
As noted in Complainant’s contentions, Complainant presented the Panel with evidence of its trademark registrations for its YOUTUBE mark. In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the Panel found that the complainant’s national trade mark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i). Another Panel held that the effective date of complainant’s trade mark rights was the date of the application filing date[3]. Based on these registrations and previous arbitration cases, the Panel finds that Complainant owns rights in its YOUTUBE mark pursuant to Policy ¶ 4(a)(i), dating back at least to January 30, 2006.
Complainant argues that its common law rights in its YOUTUBE mark date back even earlier, to April 2005 when its predecessor-in-interest first began using the mark. Complainant’s predecessor-in-interest launched <youtube.com> as early as April 24, 2005 and Complainant alleges that the YOUTUBE mark was widely promoted since April 2005 and has been continuously used since that time. Numerous examples of media attention regarding YOUTUBE throughout 2005 and prior to November 2005 are provided by Complainant. In Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002), the Panel held that the complainant established common law rights in the mark through continuous use of the mark since 1995. Given the evidence submitted by Complainant, the Panel determines that Complainant, through its predecessor-in-interest, made continuous use of a mark that created secondary meaning in the mark. The Panel therefore concludes that Complainant owns common law rights in its YOUTUBE mark under Policy ¶ 4(a)(i) prior to the dates of registration of the domain names in dispute, the earliest of which was November 3, 2005.
Complainant contends that Respondent’s disputed domain names are confusingly similar to Complainant’s YOUTUBE mark. The disputed domain names, except for the <youtubenaruto.com> domain name, simply contain common misspellings of Complainant’s YOUTUBE mark. The <youtubenaruto.com> domain name however contains Complainant’s YOUTUBE mark combined with the term “naruto”. In the absence of any explanations from the Respondent, the Panel finds that even with the addition of the term “naruto” the dominant feature of this domain name remains the trade mark YOUTUBE. Finally, all of the disputed domain names also contain the generic top-level domain (“gTLD”) “.com.”
Various UDRP cases found that misspellings of a mark used in a domain name was confusingly similar to said mark[4]. Alternatively, in Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001), the Panel held that the addition of the generic term “our” to the ICQ mark was sufficient to hold the <ouricq.com> domain name confusingly similar to the ICQ mark.
Based on these alterations, the Panel holds that all Respondent’s disputed domain names are confusingly similar to Complainant’s YOUTUBE mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name for the burden to shift to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) in which the Panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
Complainant claims that Respondent is not commonly known by the disputed domain names and that it is not authorized or licensed it to use its YOUTUBE mark. Respondent did not provide any evidence that it is commonly known by the disputed domain names, and the WHOIS information does not indicate such a correlation. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the Panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as it was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name. Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the disputed domain names to resolve to a common website offering an expensive technology product in exchange for Internet users providing personal information, entering contests, signing up for texting plans, and downloading an adware toolbar. Complainant contends that Respondent commercially benefits from the text messaging plans, contests, and the adware toolbar and also profits by selling Internet users’ personal information. Since Respondent made no comments regarding this issue, the Panel presumes that such a use is unrelated to Complainant’s YOUTUBE business. Therefore, the Panel concludes that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names.
Complainant alleges the <tyoutube.com>, <youstube.com>, <youtbue.com>, <youttube.com>, <youtubr.com>, <youtubube.com>, <youtubve.com>, <youtune.com>, <yoututbe.com>, <youtuube.com>, <youyube.com>, and <yutub.com> domain names all contain common misspellings of Complainant’s YOUTUBE mark. Complainant contends that Respondent’s registration of these disputed domain names evidences typosquatting because Respondent is attempting to take advantage of Internet users’ mistakes. In LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), the Respondent was found to be engaged in typosquatting through its <ltdcommadities.com>, <ltdcommmodities.com> and <ltdcommodaties.com> domain names, which were intentional misspellings of the complainant’s LTD COMMODITIES mark.
In the absence of any explanation from Respondent, the Panel agrees with Complainant and finds that Respondent is guilty of typosquatting and lacks rights and legitimate interests in the <tyoutube.com>, <youstube.com>, <youtbue.com>, <youttube.com>, <youtubenaruto.com>, <youtubr.com>, <youtubube.com>, <youtubve.com>, <youtune.com>, <yoututbe.com>, <youtuube.com>, <youyube.com>, and <yutub.com> domain names under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has done enough to make a prima facie case that Respondent lacks rights and legitimate interest and so the onus shifts to Respondent to prove such rights and legitimate interest.
There being no other indicia of rights or legitimate interests in the disputed domain names, the Panel finds that the Complainant has met the Policy ¶ 4(a)(ii) criteria.
Complainant also contends that in light of the fame and notoriety of Complainant's YOUTUBE mark, it is inconceivable that Respondent could have registered all of the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. It has been held that there is no place for the constructive knowledge concept under the Policy[5]. However, given the evidence submitted and the fact that Respondent registered all domain names within a three months period, the Panel agrees with the Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent creates confusion as to Complainant’s affiliation with the disputed domain names by mirroring the overall look and feel of Complainant’s website and including the YOUTUBE logo with the phrase “Thank You”. In Google Inc. v. Goldberg Client Servs., Inc., FA 1414431 (Nat. Arb. Forum Dec. 22, 2011), there was a finding of bad faith registration and use under Policy ¶ 4(b)(iv) because the domain name resolved to a website that looked like the complainant’s website and asked Internet users to fill out surveys in exchange for prizes. The Panel determines that Respondent is attempting to commercially benefit by creating confusion as to Complainant’s affiliation with the disputed domain names, and therefore holds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the Panel determined that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Since the Panel previously determined that Respondent is guilty of typosquatting in regards to the <tyoutube.com>, <youstube.com>, <youtbue.com>, <youttube.com>, <youtubr.com>, <youtubube.com>, <youtubve.com>, <youtune.com>, <yoututbe.com>, <youtuube.com>, <youyube.com>, and <yutub.com> domain names under Policy ¶ 4(a)(ii), the Panel finds that Respondent’s typosquatting is also evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tyoutube.com>, <youstube.com>, <youtbue.com>, <youttube.com>, <youtubenaruto.com>, <youtubr.com>, <youtubube.com>, <youtubve.com>, <youtune.com>, <yoututbe.com>, <youtuube.com>, <youyube.com>, and <yutub.com> domain names be TRANSFERRED to Complainant.
Hugues G. Richard
Presiding Panelist
Debrett G. Lyons
Panelist
John Upchurch
Panelist
Dated: April 10, 2012
[1] 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).
[2] See Research in Motion Ltd. v. PrivacyProtect.org, D2009-0324 (WIPO May 11, 2009); see also Ezeego One Travels & Tours, Ltd. v. PrivacyProtect.org, D2010-1346 (WIPO Oct. 21, 2010).
[3] Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002)
[4] See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).
[5] See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
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