Google LLC v. HuangPeiFang
Claim Number: FA2008001908941
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is HuangPeiFang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubetheater.com>, registered with Dynadot, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2020; the Forum received payment on August 18, 2020.
On August 19, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <youtubetheater.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2020 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@youtubetheater.com. Also on August 19, 2020, 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 September 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Google LLC, provides video sharing services through its “youtube.com” website. Complainant has rights in the trademark YOUTUBE based on its use in commerce since 2005 and its registration with various national trademark offices such as the United States Patent and Trademark Office (“USPTO”) dating back to 2008. Respondent’s <youtubetheater.com> domain name, registered on August 11, 2011, is confusingly similar to Complainant’s mark as it fully incorporates the YOUTUBE mark and adds the generic term “theater” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <youtubetheater.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the YOUTUBE mark. Additionally, Respondent could not have rights in the YOUTUBE mark since it is a coined term and a famous mark worldwide. Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to host pay-per-click hyperlinks on a parked page. Furthermore, Respondent offers the disputed domain name for sale.
Respondent registered and uses the <youtubetheater.com> domain name in bad faith. The disputed domain name resolves to a parked page featuring competing pay-per-click third-party links that Respondent presumably receives some commercial gain from and that disrupts Complainant’s business. Furthermore, Respondent offers the disputed domain name for sale. Respondent’s failure to develop the disputed domain name for many years indicates bad faith. Likewise, Respondent’s use of Complainant’s well-known mark in the disputed domain name constitutes opportunistic bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark given the extensive fame of the mark and Respondent’s use of the entire mark in the disputed domain name and the resolving webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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”).
Complainant asserts rights in the YOUTUBE mark based on registration with the USPTO and other national trademark offices around the world. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant has submitted into evidence copies of its USPTO and other registration certificates for the YOUTUBE mark, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <youtubetheater.com> domain name is confusingly similar to Complainant’s YOUTUBE mark because it fully incorporates the mark and simply adds the generic term “theater” and the “.com” gTLD. The addition of a generic term and gTLD to a mark typically does not negate any confusing similarity between a disputed domain name and that mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Complainant notes that the addition of the term “theater” to Complainant’s mark is particularly confusing because it is related to Complainant’s services of showing dramatic performances and movies on its YOUTUBE branded website. The Panel agrees and finds that the disputed domain name is confusingly similar to the YOUTUBE mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. 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)); see also 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <youtubetheater.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the YOUTUBE mark. In considering this issue WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information of record lists “HuangPeiFang” as the registrant for the disputed domain name and no information of record in this case suggests that Respondent is known otherwise or that Complainant has authorized Respondent to use the YOUTUBE mark. Furthermore, Complainant argues that Respondent could not have rights in the YOUTUBE mark since it is a coined term and a famous mark worldwide. Per Policy ¶ 4(a)(ii), when a disputed domain name contains a famous mark it is unlikely that a respondent has legitimate rights or interests in the disputed domain name. See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity). Complainant has submitted various documents showing the web traffic of the www.youtube.com website and news articles attesting to the reputation of the mark. For its part, Respondent has filed no response or made any other submission in this case. In light of the evidence presented, the Panel finds that Respondent is not commonly known by the domain name and lacks rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead offers the disputed domain name for sale and uses the disputed domain to host third-party hyperlinks on a parked page. A respondent’s attempt to sell a disputed domain name may be evidence of a lack of legitimate rights or interests under Policy ¶ 4(a)(ii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA 1602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Additionally, use of a disputed domain name to host third-party links on a parked webpage is typically not considered a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Provide Commerce, Inc. v. e on Craze, FA 1626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Complainant provides screenshots of the resolving webpage of the disputed domain that shows both an offer of the domain name for sale and pay-per-click links to third-party websites, some of which appear to compete with Complainant’s business in the field of online video. As noted, Respondent has not participated in this case and so does not dispute Complainant’s assertions or evidence. Thus, the Panel finds that Respondent is not using the domain name for 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).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark based on the extensive fame of the mark and Respondent’s use of the entire mark in the disputed domain name and its resolving webpage. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s rights in a mark may be found based on the notoriety and fame of a mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”) Here, Complainant claims that its YOUTUBE mark is a coined term and it has submitted into evidence various documents showing the history and web traffic of the youtube.com website and news articles attesting to the reputation of the mark. Further, the screenshots of Respondent’s website submitted by Complainant show use of the mark on various pages of the site. Therefore, the Panel agrees with Complainant and finds that Respondent must have had actual knowledge of Complainant’s rights in its famous YOUTUBE mark at the time the disputed domain name was registered.
Complainant argues that Respondent registered and uses the <youtubetheater.com> domain name in bad faith because Respondent offers the disputed domain name for sale. Per Policy ¶ 4(b)(i), a general offer to sell a disputed domain name may indicate bad faith. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see also Airbnb, Inc. v. 张昕 / 何青玉, FA 1786279 (Forum June 18, 2018) (“Complainant provides a screenshot of the disputed domain name’s resolving webpage, where Respondent offers to sell the domain name for €9,999 [. . .] The Panel therefore finds that Respondent registered and is using the <airbnb.pro> domain name in bad faith per Policy ¶ 4(b)(i).”); see additionally Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). The Panel notes that Complainant provides screenshots of the resolving webpage of the disputed domain that display the header “This domain youtubetheater.com may be for sale. Lick here to inquire about this domain”. Also submitted is a screenshot of the inquiry form that results from clicking on this sale offer at Respondent’s website. This form states “The owner of Youtubetheater.com has chosen to receive offer inquiries regarding this domain name” and it asks the user to input its contact information, its offer amount, and any message it wishes to send regarding its offer. In light of this uncontested evidence, the Panel finds that Respondent offers the disputed domain name for sale in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant also argues that Respondent registered and uses the <youtubetheater.com> domain name in bad faith because it resolves to a parked page featuring competing pay-per-click third-party links from which Respondent presumably receives some commercial gain and which disrupt Complainant’s business. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain to host pay-per-click hyperlinks to competing websites indicates bad faith. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”) Complainant submits screenshots of Respondent’s webpages that feature pay-per-click links to websites that compete with Complainant in the field of video streaming and Complainant asserts that Respondent receives some commercial benefit from this activity. Further, it is asserted that Respondent’s website disrupts Complainant’s business by redirecting potential consumers away from Complainant’s own www.youtube.com website. These assertions, supported by Complainant’s evidence, are reasonable and have not been disputed by Respondent. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubetheater.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 14, 2020
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