Google LLC v. Vitzo Limited
Claim Number: FA2009001913310
Complainant is Google LLC (“Complainant”), represented by Brian J. Focarino of Cooley LLP, District of Columbia, USA. Respondent is Vitzo Limited (“Respondent”), Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safeyoutube.net>, registered with Realtime Register B.V..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2020; the Forum received payment on September 22, 2020.
On September 24, 2020, Realtime Register B.V. confirmed by e-mail to the Forum that the <safeyoutube.net> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 September 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@safeyoutube.net. Also on September 28, 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 October 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it operates a worldwide Internet search service as well as the famous YOUTUBE video sharing service. Launched in 2005, YOUTUBE allows billions of people to discover, watch, and share originally-created videos at <http://youtube.com>. The YOUTUBE service also provides a forum for people to connect, inform, and inspire others across the globe and acts as a distribution platform for original content creators and advertisers large and small. YOUTUBE users upload more than 500 hours of fresh video per minute, resulting in roughly 720,000 hours or over 82 years’ worth of new content per day. YOUTUBE is localized in 102 countries across dozens of different languages. Complainant has rights in the YOUTUBE mark based upon registration in the United States in 2009. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain name is confusingly similar to its YOUTUBE mark because it fully incorporates the mark and merely adds the generic term “safe” and the “.net” generic top-level domain (“gTLD”). Complainant cited UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s YOUTUBE mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website that purports to allow users to “watch [YouTube] videos without any other unrelated or offensive distractions” and “will give you a much better experience than YouTube safety mode.” The domain name, however, has recently been found to resolve to a website that contains inappropriate content. Further, the resolving website purports to enable Internet users to view and “crop” content from Complainant’s legitimate YOUTUBE website; this service is in direct violation of Complaint’s YOUTUBE terms of service, which expressly prohibit the access, reproduction, transmission, or alternation of content from the YOUTUBE website. Complainant cited UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business by enabling users to alter content from Complainant’s website in violation of Complainant’s terms of service. Additionally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark as shown through Respondent’s direct references to Complainant’s service. Complainant cited UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark YOUTUBE and uses it to provide video sharing services. The mark is famous.
Complainant’s rights in its mark date back to at least 2009.
The disputed domain name was registered in 2014.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s mark and purports to provide services in violation of Complainant’s terms of service.
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 disputed domain name incorporates Complainant’s mark in its entirety and merely adds the generic term “safe” and the “.net” generic top-level domain (“gTLD”). Addition of a generic or descriptive term and a gTLD is insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Wells Fargo & Company v. Emily Evans, FA1204001438708 (Forum May 21, 2012) (noting “[t]he addition of a single generic word, such as the word ‘safe,’ cannot distinguish a disputed domain name under Policy ¶ 4(a)(i)”). Thus the Panel finds that the <safeyoutube.net> domain name is confusingly similar to Complainant’s YOUTUBE mark under Policy ¶ 4(a)(i).
Respondent is not licensed or otherwise authorized to use Complainant’s YOUTUBE mark and is not commonly known by the disputed domain name: when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information of record notes “Vitzo Limited” as the registrant. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain to purport to provide services in violation of Complainant’s terms of service; specifically, the resolving website purports to enable users to view and alter content from Complainant’s website in violation of Complainant’s terms of service. Diversion of Internet users to offer services that conflict with a complainant’s business is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make 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). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent disrupts Complainant’s business by enabling users to alter content from Complainant’s website in violation of Complainant’s terms of service. Use of a disputed domain name to offer a service that violates a complainant’s terms of service may be considered bad faith disruption of business under Policy ¶ 4(b)(iii) and/or (iv). See Amazon Technologies, Inc. v. Sun, FA1810001810408 (Forum Oct. 31. 2018) (Complainant states that Respondent violates Complainant’s terms of service by attempting to manipulate sales rankings. The Panel finds that this is further evidence of bad faith under Policy ¶ 4(a)(iii)); see also Amazon Technologies, Inc. v. Richard McCarthy / WorkingWebsites / Ricardo McCartney, FA1838865 (Forum May 18, 2019) (finding bad faith use and registration where respondent used the <kindlebookpromotions.com> and <kindlebookreview.net> domain names in connection with a service that enabled authors to pay for positive reviews in violation of complainant’s policies); see also Google Inc. v David Miller, FA1067791 (Forum Oct. 24, 2007) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where Respondent was “using the <youtubex.com> domain name, which is confusingly similar to Complainant’s YOUTUBE mark, to offer services directly related to Complainant’s YouTube services, but in violation of YouTube’s terms of service.”). Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii) and/or (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and explicitly refers to Complainant’s well known YOUTUBE service. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <safeyoutube.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 29, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page