Google Inc. v. Gintog / Yuriy Gintog
Claim Number: FA1208001456306
Complainant is Google Inc. (“Complainant”), represented by Kathlyn Querubin of Cooley LLP, California, USA. Respondent is Gintog / Yuriy Gintog (“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmail2.name>, <youtubedownloader.org>, and <youtubeconverter.name>, registered with Name.com LLC.
The undersigned 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2012; the National Arbitration Forum received payment on August 2, 2012.
On August 2, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <gmail2.name>, <youtubedownloader.org>, and <youtubeconverter.name> domain names are registered with Name.com LLC and that Respondent is the current registrant of the names. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 August 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@gmail2.name, postmaster@youtubedownloader.org, postmaster@youtubeconverter.name. Also on August 13, 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 September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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
1. Complainant has used the GMAIL mark in U.S. commerce in connection with the provision of e-mail and electronic messaging services.
2. Complainant owns numerous U.S. and foreign registrations for the GMAIL mark dating back to as early as April 1, 2004 with a first-use-in-commerce dating back to 1998.
3. YouTube, LLC is a wholly-owned subsidiary of Complainant and video sharing service.
4. The YOUTUBE mark was created in 2005 and the <youtube.com> domain name was registered on February 14, 2005.
5. Complainant acquired YouTube, LLC in 2006 and was assigned the YOUTUBE trademark in 2007.
6. Complainant owns U.S. trademark registrations for the YOUTUBE mark, dating back to as early as 2006, and numerous foreign trademark registrations.
7. Respondent registered the <gmail2.name> domain name on October 26, 2011, the <youtubedownloader.org> domain name on March 23, 2007, and the <youtubeconverter.name> domain name on March 28, 2011.
8. The <gmail2.name> domain name resolves to a page that urges Internet users to download various offered products, including “Gmail agent,” which is described as “The Best software created for using Gmail more comfortable”; a “YouTube Downloader”; “YouTube MP3”; and “YouTube Converter.”
9. The <youtubedownloader.org> domain name resolves to a page that prominently displays Google’s famous YOUTUBE mark and logo and advertises the “YouTube Downloader.”
10. The <youtubeconverter.name> domain name also resolves to a webpage that prominently displays Complainant’s famous YOUTUBE mark and, after a series of pages, offers and encourages Internet users to download the “YouTube Converter” product.
11. The disputed domain names are confusingly similar to the GMAIL and YOUTUBE marks because adding a descriptive or non-descriptive term to a mark does not prevent confusing similarity.
12. Respondent is not commonly known by the disputed domain names and the WHOIS information makes no mention of the domain names as Respondent’s name or nickname.
13. Complainant has not authorized or licensed Respondent to use any of its trademarks in any way.
14. Respondent’s use of the disputed domain names to encourage the download of products and sign users up for various products and services for its own profit is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
15. Respondent’s use of the disputed domain name to direct unsuspecting users to websites that purportedly offer products not sponsored by or affiliated with Complainant establishes Respondent’s bad faith by registering the domain names primarily for the purpose of disrupting the business of a competitor.
16. Respondent also attempts to capitalize on the famous GMAIL and YOUTUBE marks by confusing Internet users into thinking that the domain names are related to or sponsored by Complainant by using the same distinctive colors and the same icons and logos as Complainant’s trademarks.
17. Respondent had constructive knowledge of the mark, which evidences registration in bad faith.
18. Respondent’s registration of at least three infringing domain names is additional strong evidence of bad faith registration and use.
Respondent failed to submit a Response.
For the reasons set forth below, the panel finds Complainant is entitled to the relief requested.
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 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.”).
Identical or Confusingly Similar:
Complainant asserts that it owns several U.S. and foreign trademark registrations for the GMAIL mark, including the following:
United States Patent and Trademark Office (“USPTO”)
Reg. No. 3,150,462 registered October 3, 2006;
Reg. No. 3,353,237 registered December 11, 2007;
State Intellectual Property Service of Ukraine (“SIPSU”)
Reg. No. 73,287 registered March 15, 2007; &
Canadian Intellectual Property Office
Reg. No. TMA786269 registered January 4, 2011.
The Panel finds that these trademark registrations, including one in Respondent’s claimed country of residence, establish that Complainant owns rights in the GMAIL mark pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant also alleges that it owns several U.S. and foreign trademark registrations for the YOUTUBE mark, including the following:
USPTO
Reg. No. 3,711,233;
Reg. No. 3,525,802;
SIPSU
Reg. No. 114,805;
Reg. No. 1,012,329; &
CIPO
Reg. No. TMA763,995.
The Panel finds that Complainant’s numerous trademark registrations of the YOUTUBE mark are evidence that Complainant has rights to the YOUTUBE mark according to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that the <gmail2.name> domain name is confusingly similar to Complainant’s GMAIL mark because the disputed domain name incorporates Complainant’s mark in its entirety. Complainant contends that the <gmail2.name> domain name adds the numeral “2” to the GMAIL mark and asserts that, regardless of the inclusion of the numeral in the domain name, the <gmail2.name> domain name is confusingly similar to the GMAIL mark. The attachment of the generic top-level domain (“gTLD”) “.name” does not distinguish a disputed domain name from a mark. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel concludes that Respondent’s <gmail2.name> domain name is confusingly similar to the GMAIL mark.
Complainant contends that Respondent’s <youtubedownloader.org>, and <youtubeconverter.name> domain names are confusingly similar to Complainant’s YOUTUBE mark because the disputed domain names incorporate the mark in its entirety. Complainant asserts that the disputed domain names also add the descriptive and non-distinctive terms “downloader” and “converter,” respectively, and alleges that, regardless of the inclusion of the added terms in the domain names, the <youtubedownloader.org> and <youtubeconverter.name> domain names are confusingly similar to Complainant’s YOUTUBE mark. The attachment of the generic top-level domain (“gTLD”) “.name” or “.org” does not distinguish the disputed domain names from the mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel therefore concludes that Respondent’s <youtubedownloader.org> and <youtubeconverter.name> domain names are confusingly similar to Complainant’s YOUTUBE mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the disputed domain names or any name containing Complainant’s GMAIL or YOUTUBE marks. Complainant asserts that Respondent’s WHOIS information in connection with the disputed domain names, which identifies the registrant as “Gintog / Yuriy Gintog,” makes no mention of the domain names or the marks as Respondent’s name or nickname. Complainant also argues that it has not authorized or licensed Respondent to use any of its trademarks in any way. As a result of Complainant’s assertions and the evidence in the record, the Panel determines that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests 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).
Complainant argues that each of the disputed domain names offers various products—such as “Gmail agent,” “YouTube downloader,” “YouTube MP3,” and “YouTube Converter”—for download by Internet users. Complainant alleges that Respondent uses the disputed domain names to deceive Internet users who are seeking Complainant to derive substantial profits by signing up Complainant’s misdirected users for various products and services. Complainant characterizes these activities as improperly capitalizing on the GMAIL and YOUTUBE marks, which the Panel finds indicates no bona fide offering of goods or services under Policy ¶ 4(c)(i) and no legitimate noncommercial or fair use under Policy ¶ 4(c)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant argues that Respondent’s registration of at least three infringing domain names in the instant proceeding is strong evidence that Respondent registered and uses the domain names in bad faith. The Panel agrees and find that one instance of multiple registrations of infringing domain names reveals bad faith registration and use according to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Complainant contends that Respondent’s uses the disputed domain names to direct unsuspecting Internet users to websites that purportedly offer downloads of products not sponsored by, or affiliated with, Complainant for the purpose of disrupting the business of a competitor. The Panel determines that Respondent’s registration and use of the disputed domain names are intended to disrupt Complainant’s business, and the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii). David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant contends that Respondent capitalizes on the famous GMAIL and YOUTUBE marks by attempting to confuse Internet users into thinking that the disputed domain names are related to Complainant by using the same distinctive colors and the same icons and logos. Complainant asserts that the resolving websites are similar to the general look and feel of the GMAIL and YOUTUBE websites and deceive consumers into believing that the associated websites are sponsored by, affiliated with, or endorsed by Complainant. Complainant also alleges that Respondent derives substantial profits from the disputed domain names by signing the Internet users up for various products and services. The Panel agrees with Complainant’s assertions and concludes that Respondent registered and uses the disputed domain names to attempt to attract, for commercial gain, Internet users to the resolving website by creating a likelihood of confusion with Complainant, which the Panel concludes is evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See 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 also asserts that Respondent must have registered the disputed domain names with knowledge of Complainant’s rights in the mark due to the fame and unique qualities of the GMAIL and YOUTUBE marks. Although Complainant alleges that even constructive knowledge is sufficient for a finding of bad faith, past panels have found that constructive knowledge cannot support a bad faith finding. See Nat’l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) (“[C]onstructive notice does not support a finding of bad faith registration.”). The Panel holds, however, that the evidence indicates that Respondent had actual knowledge of Complainant’s rights, which the Panel finds does support a finding of bad faith registration under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmail2.name>, <youtubedownloader.org>, and <youtubeconverter.name> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 21, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page