Google Inc. v. Onur Koycegiz
Claim Number: FA1707001741705
Complainant is Google Inc. (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Onur Koycegiz (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <10youtube.com>, registered with Name.com, 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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2017; the Forum received payment on July 26, 2017.
On July 28, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <10youtube.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 July 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@10youtube.com. Also on July 31, 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.
A timely Response was received and determined to be complete on August 21, 2017.
On August 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the YOUTUBE mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,525,802, registered Oct. 28, 2008), establishing its rights in the mark. Complainant uses the YOUTUBE mark in connection with its video sharing service. Respondent’s <10youtube.com> (registered on February 5, 2013) is confusingly similar to the YOUTUBE mark. The domain name incorporates Complainant’s mark in full, adds the number “10,” and adds the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor by Complainant’s YOUTUBE mark, as evidenced by the WHOIS information for the disputed domain name. Complainant has not authorized Respondent to register or use the disputed domain name, nor is Respondent affiliated with, associated with, or otherwise endorsed by Complainant. Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, <10youtube.com> resolves to a website featuring “10YOUTUBE” in a brand-like manner, and purports to enable Internet users to download and save video clips from Complainant’s website, in direct violation of Complainant’s Terms of Service. Respondent also features pay-per-click hyperlinks and advertising.
Respondent registered and used <10youtube.com> in bad faith. Respondent engaged in bad faith disruption by using a website that violates Complainant’s Terms of Service. Further, Respondent’s use is likely for commercial gain, a likelihood which is also supported by Respondent’s inclusion of click-through hyperlinks. Lastly, Respondent had actual knowledge of Complainant and Complainant’s rights in the YOUTUBE mark under Policy ¶ 4(a)(iii).
B. Respondent
The domain name consists of two words: “10” and “YOUTUBE.” The addition of “10” distinguishes Respondent’s domain name from the YOUTUBE mark.
Searches leading Internet users to Respondent’s website include 10youtube, youtube10, 10 youtube, youtube video indir, video indir, youtube 10, 10yotube, 10 you tube, 10youtube.com, 10yutube, 10tube, 10youtub etc — evincing a connection with Respondent’s own brand that Internet users are attempting to reach. Respondent does not host any of Complainant’s content, and visitors are able to contact Respondent through the website to block copyrighted videos upon request. Respondent operates in every respect as “10YOUTUBE;” in its logo, favico, backend coding side, email address, etc.
Respondent has not registered and used the domain name in bad faith. Respondent offers services that are different from Complainant’s, there is no suggestion of an affiliation with Complainant and its marks, Respondent has not tried to sell the domain name, and there has been no confusion with Complainant.
Complainant, Google Inc., is a company registered in the State of Delaware in the United States of America (“United States”) that has operated an Internet services business since 1997. In November 2006, Complainant purchased and continues to operate a company called Youtube Inc which has operated an Internet based video sharing business under the name YOUTUBE mark since April 2005.
Complainant is the owner of several registrations and applications for the YOUTUBE mark, and variations, in numerous jurisdictions.
Complainant conducts business on the Internet using several domain names, including its video sharing website at the domain name <youtube.com> which was registered in February 2005.
Respondent has registered the disputed domain name on February 5, 2013.
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.
Under paragraph 4(a)(i) of the Policy, Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel finds that Complainant has rights in the YOUTUBE trademark for purposes of Policy ¶ 4(a)(i) and concludes the disputed domain name is clearly confusingly similar to Complainant’s mark.
As matter of fact, the disputed domain name reproduces Complainant’s mark in full, with the mere addition of the number “10” and the generic Top-Level Domain “.com”, which are not sufficient to avoid confusion.
Thus, the Panel finds that paragraph 4(a)(i) has been satisfied.
Based on the evidence submitted, the Panel verifies that Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by the disputed domain name nor by Complainant’s YOUTUBE mark, as evidenced by the WHOIS information for the disputed domain name, which lists “Onur Koycegiz” as the registrant of record.
Likewise, it is well clear that Complainant has not authorized Respondent to register or use the disputed domain name, nor is Respondent affiliated with, associated with, or otherwise endorsed by Complainant.
The Panel therefore concludes that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(a)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that 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 Respondent was commonly known by the domain names, and Complainant had not authorized Respondent to register a domain name containing its registered mark).
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
With respect to this proceeding, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Instead, the Panel observes that the disputed domain name resolves to a website featuring “10YOUTUBE” in a brand-like manner, and purports to enable Internet users to download and save video clips from Complainant’s website, in direct violation of Complainant’s Terms of Service. Furthermore, it is also clear that Respondent is using the disputed domain name to redirect internet users to a website displaying pay-per-click hyperlinks and advertising. See Google Inc. v David Miller, FA1067791 (Forum Oct. 24, 2007) (finding that respondent’s use of the <youtubex.com> domain name in association with a website that enabled Internet users to download and save video clips from Google’s YouTube service in violation of Google’s YouTube Terms of Service did not constitute either 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)); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that Respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to Complainant’s business).
While the resolving website includes “Youtube Video Downloader - MP3 Converter” and various advertisements that may or may not be related to Complainant’s video streaming offerings, the Panel agrees that Respondent has engaged in use that does not demonstrate any rights or legitimate interests under the Policy.
In view of the above, the Panel concludes that by using the disputed domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website, by creating a likelihood of confusion with Complainant's mark.
Therefore, based on the evidence of record, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <10youtube.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: August 25, 2017
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