Google LLC v. TECH DOMAIN / TECH DOMAIN SERVICES PRIVATE LIMITED
Claim Number: FA1801001767936
Complainant is Google LLC (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, D.C., USA. Respondent is TECH DOMAIN / TECH DOMAIN SERVICES PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubekids.com> (the Domain Name), registered with Tirupati Domains and Hosting Pvt Ltd..
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2018; the Forum received payment on January 19, 2018.
On January 23, 2018, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the Forum that the <youtubekids.com> domain name is registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt Ltd. 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 January 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@youtubekids.com. Also on January 29, 2018, 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 February 26, 2018pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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’s contentions can be summarised as follows:
Complainant is the owner of, inter alia, a US trade mark registration for YOU TUBE with first use in commerce shown as 2005.
In 2015 Complainant launched an application under the name YOU TUBE KIDS for providing content geared towards children.
The Domain Name was registered in 2006 after Complainant’s predecessor had obtained enforceable rights in the YOU TUBE mark. The Domain Name redirects to various web sites including wellhello.com which contains pornographic images and videos. The Domain Name also directs to suspected malware sites. Respondent has not responded to Complainant’s requests to disable the Domain Name.
The Domain Name entirely incorporates the distinctive famous YOU TUBE mark and merely adds a gTLD .com and the generic term ‘kids’ which do nothing to distinguish the Domain Name from Google’s YOU TUBE mark. The Domain Name is confusingly similar to Complainant’s YOU TUBE mark.
Complainant has not authorised Respondent to register the Domain Name or use it in any manner. Respondent is not commonly known by the Domain Name. Respondent does not have rights or legitimate interests in the Domain Name.
Use for pornography or malware is not a bona fide offering of goods and services or a legitimate non commercial or fair use.
Respondent registered and is using the Domain Name to attract Internet users to its online location by creating a likelihood of confusion with Complainant’s mark under Policy 4 (b)(iv).
Use for pornography or malware is bad faith registration and use.
Respondent has no connection with the Domain Name and its registration and use is opportunistic bad faith. Non response to Complainant’s demand letters to Respondent also supports a finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of, inter alia, a US trade mark registration for YOU TUBE with substantial first use in commerce shown from 2005.
The Domain Name registered in 2006 has been used to point to pornography and suspected malware.
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 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 and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s YOU TUBE mark (registered in the USA for services relating to communication of electronic content on the Internet filed and with first use in commerce recorded as 2005), the generic term ‘kids’ and the gTLD .com. Use in 2005 was substantial and high profile and in the view of the Panel would have quickly given Complainant’s predecessor in interest enforceable rights in the YOU TUBE name in common law rights before the YOU TUBE filing proceeded to registration.
The addition of the generic word ‘kids’ does not serve to distinguish the Domain Name from Complainant’s YOU TUBE mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i)).
The gTLD .com does not serve to distinguish the Domain Name from the YOU TUBE mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purposes of the Policy.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by YOU TUBE Complainant’s mark. Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
The use of a Domain Name containing a well known mark to resolve to adult orientated material cannot constitute a bona fide use. See Altria Group, Inc. and Altria Group Distribution Company v xiazihong, FA 1732665 (Forum July 7, 2017).
Nor is use of a Domain Name to point to suspected malware. See Ceridian Corp v Versata Software Inc, FA 1603444 (Forum Mar 19, 2015).
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade mark in this way. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Name was registered in 2006 after Complainant’s YOU TUBE service was launched by its predecessor in interest and had quickly obtained substantial use and a high profile in 2005.
Use of a Domain Name containing a trade mark with a reputation in relation to a web page hosting adult material is evidence of bad faith registration and use under Policy 4 (b)(iii). See Molson Canada 2005 v JEAN LUCAS/DOMCHARME GROUP, FA 1412001596702 (Forum Feb 10, 2015). There is, therefore, no need to consider any additional grounds of bad faith.
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb 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 <youtubekids.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 28, 2018
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