Google Inc. v. CHESTER / George / jourrapide / Cezzane Demello
Claim Number: FA1702001718351
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is CHESTER / George / jourrapide / Cezzane Demello (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtube-on-fire.com>, <youtube-on-fire.ws>, <youtube-on-fire.net>, <youtube-on-fire.biz>, <youtubeonfire.bz>, <youtubeonfire.xyz>, and <youtubeonfire.pro> registered with Dynadot, LLC, 101domain GRS Limited, and PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2017; the Forum received payment on February 22, 2017.
On Feb 22, 2017, Feb 23, 2017, Dynadot, LLC; 101domain GRS Limited; PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <youtube-on-fire.com>, <youtube-on-fire.ws>, <youtube-on-fire.net>, <youtube-on-fire.biz>, <youtubeonfire.bz>, <youtubeonfire.xyz>, and <youtubeonfire.pro> domain names are registered with Dynadot, LLC; 101domain GRS Limited; and PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. Dynadot, LLC, 101domain GRS Limited, and PDR Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by the Dynadot, LLC, 101domain GRS Limited, and PDR Ltd. d/b/a PublicDomainRegistry.com registration agreements and have 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 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2017 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@youtube-on-fire.com, postmaster@youtube-on-fire.ws, postmaster@youtube-on-fire.net, postmaster@youtube-on-fire.biz, postmaster@youtubeonfire.bz, postmaster@youtubeonfire.xyz, postmaster@youtubeonfire.pro. Also on February 23, 2017, 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 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the YOUTUBE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,711,233, registered Nov. 17, 2009). See Amended Compl., at Attached Annex 12. Respondent’s domain names are confusingly similar as they include the entire YOUTUBE mark, add the generic term “on fire” and various top-level domains (“TLDs”), while some of them also add hyphens.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the YOUTUBE mark, nor is Respondent sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the mark in a domain name. Respondent also does not use the disputed domain for any bona fide offering of goods or services because Respondent uses the domain names to offer illegal content for download or streaming. See Amended Compl., at Attached Annex 6. Further, Respondent uses the domain names to feature pay-per-click advertising of entertainment-oriented content from which Respondent presumably commercially gains. See Amended Compl., at Attached Annex 6.
Respondent registered and uses the domain names in bad faith. Respondent disrupts Complainant’s business by diverting users seeking Complainant’s services and offering similar video streaming capabilities. See Amended Compl., at Attached Annex 6. Further, Respondent uses the disputed domain names to offer the illegal downloading of various copyrighted media content. Id. Additionally, Respondent uses the disputed domain names to generate revenue via pay-per-click fees from advertisements on the webpage, some of them in direct competition with Complainant. Id. Moreover, Respondent engages in a pattern of registering domain names, as it registered seven domain names incorporating the famous YOUTUBE mark, constituting cybersquatting. Finally, Respondent must have had actual or constructive knowledge of Complainant’s mark because the YOUTUBE mark has a strong reputation and Respondent registered seven different domain names all incorporating the YOUTUBE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent first registered the disputed domain names on the following dates: <youtube-on-fire.com> (July 16, 2015), <youtube-on-fire.ws> (Sept. 2, 2015), <youtube-on-fire.net> (Sept. 2, 2015), <youtube-on-fire.biz> (Sept. 2, 2015), <youtubeonfire.bz> (July 16, 2015), <youtubeonfire.xyz> (Oct. 15, 2015), and <youtubeonfire.pro> (June 6, 2015).
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.”
Complainant contends that the WHOIS records for the disputed domain names <youtube-on-fire.com>, <youtube-on-fire.ws>, <youtube-on-fire.net>, <youtube-on-fire.biz> list the registrant as “Chester” residing in Miami, Thailand. See Amended Compl., at Attached Annex 4. Further, all of the four above referenced domains redirect users to the disputed domain <youtube-on-fire.bz>. See Amended Compl., at Attached Annex 6. Moreover, the YouTubeOnFire.bz domain name utilizes domain name servers identical to those utilized by <youtube-on-fire.com>, <youtubeonfire.xyz>, and <youtubeonfire.pro>, namely, ns.cloudflare.com. Additionally, the resolving webpages contain similar or identical content and design, furthering the notion that the different Respondents listed are one and the same. Finally, all of the domain names were registered during a short period of time, with many of them registered on the same date. See Amended Compl., at Attached Annex 4.
As such, the Panel finds that Complainant has proffered sufficient evidence to treat all responding entities as one and the same.
The Panel finds that the disputed domain names and Complainant’s trademark are confusingly similar; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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(f), 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 (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.”).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark, YOUTUBE. Complainant has adequately plead it interests in and to that trademark. Respondent arrives at the dispute domain names by fully incorporating the YOUTUBE trademark into each domain name and adding a generic term, various TLD’s, and in some cases, hyphens. This is insufficient to distinguish the disputed domain names from Complainant’s mark for purposes of Policy ¶ 4(a)(i).
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has no permission or license to register the disputed domain names. Respondent is also not commonly known by the disputed domain names. The WHOIS identifies “CHESTER / George / jourrapide / Cezzane Demello” as the registrant. See Amended Compl., at Attached Annex 4, 13. Finally, Respondent has never be affiliated with Complainant.
The Panel also finds that Respondent fails to use the disputed domain for any bona fide offering of goods or services because Respondent uses the domain names to offer illegal content for download or streaming. Illegal use of a domain name can evince a lack of a bona fide offering of goods or services. See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not 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). Respondent lists various copyrighted content on its disputed domains that users can download illegally.
The Panel further finds that Respondent’s actions do not constitute a bona fide offering of goods or services because Respondent, likely in order to garner pay-per-click fees, offers advertisements to direct users to websites in direct competition with Complainant. This conduct may be taken to demonstrate a failure to make a bona fide offering of goods or services. See Yahoo! Inc. v. Web Master, FA 127717 (FORUM Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). Apparently, the disputed domain names feature pay-per-click advertising of entertainment-oriented content from which Respondent presumably benefits from pay-per-click fees. See Amended Compl., at Attached Annex 6.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names. The Panel finds that Respondent registered the domain names in bad faith by engaging in a pattern of bad faith cybersquatting. The registration of multiple confusingly similar domain names incorporating Complainants trademark demonstrates bad faith registration per Policy ¶ 4(b)(ii). Respondent apparently has registered seven domain names that incorporate Complainant’s trademark.
The Panel, therefore, finds that Respondent’s registration of multiple domain names constitutes bad faith registration under Policy ¶ 4(b)(ii).
The Panel further finds that Respondent registered and is using the disputed domain names in bad faith by attempting to intercept users seeking Complainant’s services and commercially benefit by using a confusingly similar domain name and offering competing services. Prior Panels have concluded that conduct of this nature may evince Policy ¶ 4(b)(iii) bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent apparently redirects prospective users to a webpage that offers media content similar to what Complainant offers on its YOUTUBE based site. See Amended Compl., at Attached Annex 6. Attempting to commercially benefit from another’s trademark is bad faith use and registration per Policy ¶ 4(b)(iii).
Further, it appears that Respondent uses the disputed domain names to commercially benefit from pay-per-click fees and promoting websites in direct competition with Complainant. Such conduct is also bad faith use and registration under the Policy. Respondent offers advertisements for various competitors of Complainant’s business, presumably to benefit from pay-per-click fees. See Amended Compl. at Attached Annex 6. The Panel also concludes that this conduct constitutes bad faith use and registration of the disputed domain names.
Respondent also apparently uses the disputed domains to engage in illegal activity. Using a domain name for an illegal purpose can evidence bad faith use per Policy 4(a)(iii). See Google Inc. v Domain Admin / Whois Privacy Corp., FA150400161605239 (Forum Mar. 22, 2015) (Respondent’s use of the at-issue domain name to aid illegal activities under Complainant’s trademark and thereby tarnish the GOOGLE mark also suggests Respondent’s bad faith.). Here, Respondent uses the disputed domain names to offer the illegal downloading of various copyrighted media content. See Amended Compl., at Attached Annex 6. The Panel, therefore, finds that Respondent uses the disputed domains in bad faith per Policy ¶ 4(a)(iii) by offering illegal downloads of copyrighted material.
Complainant lastly claims that Respondent had actual knowledge of Complainants prior rights and interests in and to the trademark YOUTUBE. The Panel finds that Respondent’s conduct and a totality of the circumstances indicates that Respondent had prior knowledge of the trademark YOUTUBE and of Complainant’s rights thereto.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <youtube-on-fire.com>, <youtube-on-fire.ws>, <youtube-on-fire.net>, <youtube-on-fire.biz>, <youtubeonfire.bz>, <youtubeonfire.xyz>, and <youtubeonfire.pro> domain names transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: March 28, 2017
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