Google LLC v. Gueorgui Sergeev / GMC
Claim Number: FA1812001822018
Complainant is Google LLC (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, USA. Respondent is Gueorgui Sergeev / GMC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubecopyright.com>, registered with GoDaddy.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.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2018; the Forum received payment on December 20, 2018.
On December 21, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <youtubecopyright.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 December 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2019 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@youtubecopyright.com. Also on December 21, 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.
A timely Response was received and determined to be complete on January 30, 2019.
On February 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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 argues that the disputed domain name is identical to Complainant’s YOUTUBE trademark as Respondent’s addition of the term “copyright” do not distinguish the disputed domain name from Complainant’s trademark.
Complainant also argues that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant further argues that the disputed domain name was registered and is being used in bad faith. Complainant argues that Respondent had full knowledge of Complainant’s trademark and that the disputed domain name was registered to confuse Internet users whilst benefitting from Complainant’s goodwill and reputation.
B. Respondent
Respondent submitted a Response to Complainant’s contentions, asserting that the disputed domain name was legitimately purchased in good faith and that the purpose of the website the disputed domain name resolves to is to educate the public about YouTube and help users better their YouTube experience.
C. Additional Submissions
Complainant argues that Respondent has failed to establish a defense under Paragraph 4(c)(iii) of the Policy that it was making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers.
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.
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
Complainant is the owner of numerous trademark registrations of the Mark worldwide, including the following in the United States:
- Registration no. 3525803, [visual depiction of the YOUTUBE mark omitted], registered on October 28, 2008;
- Registration no. 3714120, [visual depiction of the YOUTUBE mark omitted], registered on November 24, 2009;
For the purposes of establishing whether Complainant has rights in the trademarks under the Policy, the Panel finds that Complainant is the registered owner of the above trademarks and therefore has rights therein. Complainant registered the above trademarks beginning in 2008, long before Respondent registered the disputed domain name in 2018.
Complainant contends that the disputed domain name <youtubecopyright.com> incorporates Complainant’s YOUTUBE mark in its entirety plus a term, “copyright,” and a gTLD “.com”. See Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345. It is well established that the addition of merely descriptive terms would not prevent a finding of confusing similarity under the first element (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.). Past Panelists have found that such changes are not typically sufficient to distinguish a domain name from an incorporated mark. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). It is also established that an addition of a gTLD to a trademark is irrelevant in the analysis under Paragraph 4(a)(i) of the Policy.
The Panel also notes that Respondent did not deny any confusing similarity of the disputed domain name with Respondent’s mark and that Respondent is relying on the defense under Paragraph 4(c)(iii) of the Policy that it was making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers which is addressed below.
In the present case, the Panel finds that there is confusing similarity between Complainant’s trademark and Respondent’s disputed domain name as the latter contains Complainant’s trademark in its entirety plus a general term, “copyright”.
In the present case, Complainant has demonstrated prima facie that Respondent lacks rights or legitimate interests in respect of the disputed domain names through providing evidence of trademark registration long before Respondent registered the disputed domain name. In addition, Complainant also showed that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the YOUTUBE mark in any way. The WHOIS information provided by Complainant identifies the registrant of the disputed domain name as “Gueorgui Sergeev / GMC” which does not resemble the disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017). There is also no information in the record which shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Further, the addition of the term “copyright” to the disputed domain name triggers an inference of affiliation with Complainant and does not constitute fair use of the disputed domain name. (See WIPO Overview 3.0, section 2.5.1.).
Once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy 4(a)(ii)); Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); WIPO Overview 3.0, section 2.1.
Respondent argues that he had purchased the disputed domain name in good faith for legitimate noncommercial and fair use without the purpose of making profit. However, Respondent has failed to produce any evidence to support his claims. Such evidence is especially crucial when the disputed domain name comprises a trademark that is associated so clearly with Complainant.
Respondent also did not provide any evidence that the website is intended to educate or assist YouTube users, such as how or in what way such education or assistance is rendered to Internet users. On the contrary, Respondent admitted that there is some infringement of copyrighted work on the disputed domain name website even though it is at a “minimum”. Respondent also highlighted that there are no prices on the disputed domain name website. However, in the Panel’s view, this is insufficient to support Respondent’s assertions.
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires Complainant to show that Respondent registered and is using the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
Finding of registration in bad faith requires a showing that Respondent is taking an unfair advantage of otherwise abuses the complainant’s mark (WIPO Overview 3.0, 3.1). UDRP paragraph 4(b)(i) provides a non-exclusive scenario that constitutes evidence of a respondent’s bad faith:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Complainant argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to divert users to Respondent’s own commercial website. Such use may not be considered a bona fide offering or a legitimate use under Policy 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)). In the present case, Complainant has provided screenshots of the disputed domain name’s resolving webpage, which features Complainant’s mark and purports to offer copyright protection for users’ videos uploaded to Complainant’s website. See Compl. Annex 11.
Complainant also argues that Respondent is attempting to pass off as Complainant due to the use of Complainant’s mark on the website and the red and black color scheme which is distinctive to Complainant. It is well established that passing off may not be considered a bona fide offering or a legitimate use under Policy 4(c)(i) or (iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii)).
Having regard to the particular circumstances in the present case, the Panel is of the view that Respondent has failed to use the disputed domain name in connection with 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).
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of Complainant’s marks, the confusing similarity between the disputed domain name and Complainant’s marks, Respondent’s use of the disputed domain name, Respondent’s failure to present any credible rationale for registering the disputed domain name, and the fact that is no plausible good faith use Respondent can put the disputed domain name to, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubecopyright.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: February 18, 2019
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