Google Inc. v. James Lucas / FireStudio / jameschee / FIRESTUDIO / SEONG YONG
Claim Number: FA1502001605757
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is James Lucas / FireStudio / jameschee / FIRESTUDIO / SEONG YONG (“Respondent”), Singapore, Singapore.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com>, registered with Godaddy.Com, LLC; Pdr Ltd. D/B/A Publicdomainregistry.Com; Enom, Inc.; Fastdomain 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2015; the Forum received payment on February 19, 2015.
On February 19, 2015, Fastdomain Inc. confirmed by e-mail to the Forum that the <youtubeon.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain 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 February 20, 2015, Enom, Inc. confirmed by e-mail to the Forum that the <youtubemainpage.com> and <youtubesosexy.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Disputed Resolution Policy (the “Policy”).
On February 20, 2015, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <youtubeonsale.com> domain name is registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the name. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr 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 Disputed Resolution Policy (the “Policy”).
On Feb 20, 2015, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <youtubeonfire.com> domain name is registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.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 February 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2015 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@youtubeonfire.com, postmaster@youtubeonsale.com, postmaster@youtubemainpage.com, postmaster@youtubesosexy.com, postmaster@youtubeon.com. Also on February 25, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant uses the YOUTUBE marks in connection with its digital content distribution platform and service. Complainant has registered such marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,525,802, registered October 28, 2008), which evinces rights in the mark. The <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names are confusingly similar to the YOUTUBE mark because they merely add generic descriptors and the generic top-level domain (“gTLD”) “.com” to the mark.
2. Respondent has no rights or legitimate interests in the <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names. Respondent is not commonly known by the disputed domain names or any variant of the YOUTUBE mark, nor has Complainant given Respondent authorization to register or use the disputed domain names. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. This is evidenced by the resolving pages of the disputed domain names displaying identical pages all offering digital content, including movies, television shows, and music videos, many of which are presumed to be pirated copies of copyrighted products that Respondent is making available for illegal download or viewing. Additionally, Respondent is presumably receiving click-through fees from the featured advertising of entertainment-oriented content.
3. Respondent is using the disputed domain names in bad faith. Multiple domain name registrations in the case at hand indicate a pattern of bad faith registration. Respondent is using the disputed domain names to divert Internet users who seek Google’s YouTube service to websites that offer video-streaming capabilities and downloads of digital content not sponsored by, affiliated with, or endorsed by Complainant for the purpose of disrupting Complainant’s business. Respondent is using the disputed domain names in an attempt to presumably reap pay-per-click revenue from entertainment-oriented advertising. Respondent has registered the disputed domain names with actual knowledge of Complainant’s mark.
B. Respondent’s Contentions
1. Respondent did not submit a response.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control 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 for Uniform Domain Name Dispute Resolution Policy (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.” In the instant proceedings, Complainant has alleged that the entities which control 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 for Uniform Domain Name Dispute Resolution Policy (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 each of the disputed domain names are under common control by the same person or entity, Respondent. See Compl., at Attached Annexes 13-17 (resolving page for all disputed domain names displays list of movies). Further, Complainant contends that each website includes a copyright line on the bottom indicating that an entity named “MovieTube” owns the copyright to the page. Id. Similarly, each website resolving from the disputed domain names contains a meta-tag stating that the “author” of each page is an entity named “movietube.” See Compl., at Attached Ex. 18 for meta-tag data for each of the disputed domain names. Additionally, the WHOIS records indicate that the domain name servers for all of the disputed domain names are identical, namely, <ben.ns.cloudflare.com> and <zoe.ns.cloudflare.com>; as well as the registrant organization (“FireStudio”), phone number (+65.90861901), and email address (firestudio@ymail.com). See Compl., at Attached Annexes 4-8 (WHOIS records). Complainant argues that such records evince that the <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names are under common control. Past panels have agreed that such evidence demonstrates that disputed domain names under multiple registrants are commonly controlled by a single respondent. See Swatch AG v. Delta Ltd. / Siven Dayan, FA1404051 (Nat. Arb. Forum Sep. 29, 2011) (finding that multiple domain names were under common control in part due to the meta-tag data indicating a common owner); Yahoo! Inc. v. Zviely, FA 162060 (Nat. Arb. Forum July 24, 2003) ("[W]here it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registrant names.").
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
1. Respondent’s <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names are confusingly similar to Complainant’s YOUTUBE mark.
2. Respondent does not have any rights or legitimate interests in the <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names.
3. Respondent registered or used the <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names in bad faith.
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.”).
Complainant uses the YOUTUBE marks in connection with its digital content distribution platform and service. Complainant claims to have registered such marks with the USPTO (e.g., Reg. No. 3,525,802, registered October 28, 2008), and claims that such registrations demonstrate rights in the mark, even though Respondent reportedly resides in Singapore. The Panel agrees that Complainant’s registration of the YOUTUBE mark with the USPTO evinces rights in the mark for purposes of Policy ¶ 4(a)(i), despite Respondent’s residence in Singapore. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names are confusingly similar to the YOUTUBE mark because they merely add generic descriptors and the generic top-level domain (“gTLD”) “.com” to the mark. Past panels have agreed that such alterations to a mark do not distinguish disputed domain names under a Policy ¶ 4(a)(i) analysis of confusing similarity. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, this Panel finds the <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names confusingly similar to Complainant’s YOUTUBE mark pursuant to Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names. First, Complainant urges that Respondent is not commonly known by the disputed domain names nor has Complainant given Respondent any authorization to use the disputed domain names or any variation of the YOUTUBE mark. The WHOIS information merely lists “James Lucas / FireStudio / jameschee / FIRESTUDIO / SEONG YONG” as the registrants for the domain names. See Compl., at Attached Annexes 4-8. As Respondent has failed to add any evidence for the Panel’s consideration, the Panel finds no basis in the available evidence to find Respondent commonly known by the disputed domain name per 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant claims Respondent is not making a bona fide offering of goods or services through the disputed domain names, nor a legitimate noncommercial or fair use. Complainant alleges that the disputed domain names resolve to identical pages all offering digital content, including movies, television shows, and music videos, many of which are presumed to be pirated copies of copyrighted products that Respondent is making available for illegal download or viewing. Additionally, Respondent is presumably receiving click-through fees from the featured advertising of entertainment-oriented content. See Compl., at Attached Annexes 13-17. The Panel agrees that Respondent’s use of the disputed domain names to direct users to third-party links, signals that no Policy ¶ 4(c)(i) bona fide offering of goods or services are made through the disputed domain name, nor is the domain name used for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant argues that Respondent is engaging in a pattern of bad faith registration under Policy ¶ 4(b)(ii), as evidenced by the registering of five disputed domain names in the case at hand. Past panels have found a pattern of bad faith registration when a respondent had registered multiple confusingly similar domain names that infringed on a complainant’s mark. 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)); EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). This Panel agrees that Respondent’s registration of the <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names in the current case is evidence of a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant contends that Respondent is engaging in bad faith disruption of its business under Policy ¶ 4(b)(iii). Complainant substantiates this argument by establishing the similar video-streaming capabilities Respondent purports to offer via the disputed domain names that are not sponsored by, affiliated with, or endorsed by Complainant. See Compl., at Attached Annexes 13-17. This Panel agrees that Respondent’s use of confusingly similar domain names to offer downloads via video streaming services to confuse Internet users is a bad faith disruption under Policy ¶ 4(b)(iii). See Google Inc. c. Gintog / Yuriy Gintog, FA1456306 (Nat. Arb. Forum Sep. 21, 2012) (finding the respondent’s use of the <youtubedownloader.org> and <youtubeconverter.name> domain names to offer downloads of the respondent’s own products to constitute evidence of bad faith use and registration).
Next, Complainant argues that Respondent’s use of the disputed domain names is a bad faith attraction for commercial gain under Policy ¶ 4(b)(iv) as Respondent is likely gaining click-through fees from advertisements. See Compl., at Attached Annexes 13-17. Past panels have found such use to constitute bad faith per Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name). This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had actual notice of the YOUTUBE mark prior to registration of the disputed domain names. Past panels have found actual notice of a mark when the mark has achieved such fame that it would be impossible to conceive of any potential legitimate use other than to profit off the good faith associated with the famous mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel finds actual notice has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubeonfire.com>, <youtubeonsale.com>, <youtubemainpage.com>, <youtubesosexy.com>, and <youtubeon.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 7, 2015
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