Google Inc. v. saldana azanero elias / saldana azanero elias
Claim Number: FA1205001445489
Complainant is Google Inc. (“Complainant”), represented by Gavin L. Charlston of Cooley LLP, California, USA. Respondent is saldana azanero elias / saldana azanero elias (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubeperu.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
G. Gervaise Davis III, Honorable Bruce E. Meyerson, (Ret.), Prof. Darryl C. Wilson, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2012; the National Arbitration Forum received payment on May 24, 2012.
On May 24, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <youtubeperu.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 May 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2012 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@youtubeperu.com. Also on May 24, 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 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 June 20, 2012 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed
G. Gervaise Davis III, Honorable Bruce E. Meyerson, (Ret.), Prof. Darryl C. Wilson, Chair, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the owner of the mark YOUTUBE and all associated rights, title and interests in the mark in the United States, Peru, and the rest of the world. Complainant states that it owns numerous global registrations for the YOUTUBE mark “dating back to as early as 2006” and each registration remains valid and in full force and effect. Complainant further contends that Respondent’s domain name, <youtubeperu.com>, incorporates its mark in its entirety and is therefore nearly identical and confusingly similar to its protected YOUTUBE mark. Complainant also asserts that Respondent has no rights or legitimate interest in the disputed domain name and that the Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google, a company incorporated in the USA, that acquired YouTube LLC in 2006. YouTube LLC is a wholly-owned subsidiary of Google which assigned to Google all of its trademarks including the mark YOUTUBE. Complainant owns multiple registrations for the YOUTUBE mark issued by the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,525,802 registered October 28, 2008) and the Peru National Institute for the Defense of Competition and Protection of Intellectual Property (“NIDCPIP”) (e.g., Reg. No. 3000051-2006 applied for December 14, 2006). YOUTUBE is utilized as a mark to identify video sharing services that allow billions of people worldwide to discover, watch, and share videos at Complainant’s website, <youtube.com>.
Respondent, who has a Peruvian address did not reply to the complaint. The Respondent registered the disputed domain name on December 1, 2010.
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 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.
In view of Respondent's failure to submit a response, the Panel elects to 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.”).
Complainant provided evidence of established rights in the YOUTUBE mark, in the USA (e.g., USPTO Reg. No. 3,525,802 registered October 28, 2008) and Peru (e.g., NIDCPIP Reg. No. 3000051-2006 applied for December 14, 2006) as well as a list of additional registrations for its mark around the world. Based upon Complainant’s trademark registrations, the Panel concludes that Complainant established its rights in the YOUTUBE mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant also claims that Respondent’s <youtubeperu.com> domain name is confusingly similar to the YOUTUBE mark. The Panel notes that the disputed domain name includes the entire mark, while adding the generic top-level domain (“gTLD”) “.com” and the geographic term “peru.” Based upon the changes made, the Panel finds that Respondent failed to sufficiently differentiate the disputed domain name from Complainant’s YOUTUBE mark. The Panel therefore concludes that Respondent’s <youtubeperu.com> domain name is confusingly similar to Complainant’s YOUTUBE mark under Policy ¶ 4(a)(i). See 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.”); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part).
Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that the Complainant has made such a prima facie case.
Complainant argues Respondent is not commonly known by the disputed domain name or any name containing Complainant’s YOUTUBE mark. Complainant also states that Respondent is not authorized or licensed to use Complainant’s YOUTUBE mark in any way. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “saldana azanero elias / saldana azanero elias.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 also argues that Respondent’s disputed domain name resolves to a website offering links to unrelated third parties and video download and upload services that directly compete with Complainant’s own services provided under the YOUTUBE mark. The Panel notes that the screenshot provided by Complainant indicates that the website offers videos to download and the opportunity to upload your own videos, similar to the services offered by Complainant under the YOUTUBE mark. The Panel finds that Respondent is using the disputed domain name to offer competing services from its website and is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Complainant has proven this element.
Complainant asserts that Respondent intended to attract Internet users to Respondent’s website for Respondent’s own commercial gain. Complainant states that Respondent’s disputed domain name resolves to a website offering links to unrelated third parties and video download and upload services that directly compete with Complainant’s own services provided under the YOUTUBE mark. The Panel notes that the printout provided by Complainant of the resolving website indicates that video upload and downloading services are offered. Complainant states that the video services offered by Respondent directly compete with Complainant’s own services. The Panel concludes that Respondent registered and uses the disputed domain name with the intent of confusing Internet users into believing that Respondent’s website is somehow affiliated with Complainant and then capitalizing on that confusion. Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that the Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubeperu.com> domain name be TRANSFERRED from Respondent to Complainant.
G. Gervaise Davis III, Honorable Bruce E. Meyerson, (Ret.),
Prof. Darryl C. Wilson, Chair, Panelists
Dated: July 3, 2012
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