Google LLC v. Vladimir / YouProject
Claim Number: FA1905001845222
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Vladimir / YouProject (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtuby.xyz>, registered with Hostinger, UAB.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2019; the Forum received payment on May 28, 2019.
On May 31, 2019, Hostinger, UAB confirmed by e-mail to the Forum that the <youtuby.xyz> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 June 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@youtuby.xyz. Also on June 4, 2019, 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 June 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is the operator of various online platforms.
Complainant has rights in its YOUTUBE mark through registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <youtuby.xyz> domain name is confusingly similar to Complainant’s mark as Respondent merely replaces the letter “e” with the letter “y”, and added the “.xyz” generic top level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <youtuby.xyz> domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use of the at-issue domain name is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is using the at-issue domain name to present advertisements and allows internet users to download material from Complainant’s websites. Furthermore, Respondent has engaged in typosquatting. Finally, Respondent’s use of disclaimer does nothing to alleviate the misleading nature of Respondent’s use of the <youtuby.xyz> domain name.
Finally, Respondent’s <youtuby.xyz> domain name was registered and is being used in bad faith, as Respondent is attempting to attract internet users for commercial gain by attempting to pass itself off as Complainant. Further, Respondent’s use for the domain name offers internet users the opportunity to violate Complainant’s terms of use for its YOUTUBE services. Additionally, Respondent uses advertisements for presumable commercial gain. Finally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark due to the fame of the mark and the full incorporation of Complainant’s mark on the resolving webpage for the <youtuby.xyz> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the YOUTUBE mark as demonstrated by its registration of such marks with the USPTO and otherwise.
Complainant’s rights in the YOUTUBE mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <youtuby.xyz> domain name to confound internet users into believing they are dealing with Complainant when they are actually dealing with Respondent. The domain name addresses Respondent’s <youtuby.xyz> website where Respondent passes itself off as Complainant so that Respondent may improperly exploit website visitors for its own commercial benefit.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for YOUTUBE, as well as its other registrations for such mark worldwide, evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Additionally, Respondent’s domain name contains Complainant’s YOUTUBE trademark, with its “e” replaced by a “y”, all followed by the top level domain name “.xyz”. The differences between the <youtuby.xyz> domain name and Complainant’s YOUTUBE trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s domain name is confusingly similar to Complainant’s YOUTUBE trademark. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Vladimir / YouProject” and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by the <youtuby.xyz> domain name. The Panel therefore concludes that Respondent is not commonly known by the <youtuby.xyz> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the <youtuby.xyz> domain name to pass itself off as Complainant. Respondent employees the domain name to present advertisements and also to facilitate internet users in downloading and locally storing videos from Complainant’s YOUTUBE website contrary to the website’s terms of use. The website contains Complainant’s trademark and its well-known play-button icons. Respondent’s use of the confusingly similar <youtuby.xyz> domain name to deceive internet users and foster conduct against Complainant’s terms of use, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) , nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also, Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the <10youtube.com> domain name in association with a website that enabled Internet users to download and save content 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)).
Respondent’s use of a disclaimer on the <youtuby.xyz> website does not mitigate internet user confusion and does not confer rights or legitimate interest under Policy ¶ 4(a)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to pass itself off as Complainant and display third party advertisement, presumably for commercial gain. The <youtuby.xyz> domain name addresses a webpage that prominently features Complainant’s YOUTUBE trademark as wells as images of its related red play-button icons. Respondent’s use the at-issue domain name to impersonate Complainant and capitalize on Complainant’s mark for financial gain demonstrates Respondent’s bad faith registration and use of <youtuby.xyz> pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”; see also,Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
Next, Respondent’s overt misspelling of Complainant’s trademark in the at-issue domain name shows that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark. Here, in creating the at-issue domain name Respondent misspells Complainant’s YOUTUBE trademark by substituting its final “e” with a “y”. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Moreover, Respondent’s <youtuby.xyz> website enables visitors to download and save content from Complainant’s <youtube.com> website in violation of Complainant’s terms of use prohibiting such activity. Respondent, by its intention to aid third parties in violating Complainant’s terms of use, further shows Respondent’s bad faith under the Policy. See Google LLC v. david stonehill, FA1808821 (Forum Nov. 1, 2018) (finding bad faith use and registration where the respondent used the <dcyoutube.com> domain name in association with a website that enabled download of content from Google’s YouTube website in violation of Google’s YouTube Terms of Service).
Finally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark when it registered <youtuby.xyz>. Respondent’s actual knowledge is evident from the worldwide notoriety of such mark. Indeed, it is inconceivable that Respondent could have registered the <youtuby.xyz> domain name without having knowledge of Complainant’s YOUTUBE trademark. Registering and using the confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtuby.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 30, 2019
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