Google LLC v. Fayva / J. Fink Ivana / Mark Kei / Home
Claim Number: FA2011001921798
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Fayva / J. Fink Ivana / Mark Kei / Home (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtubeconverterfree.org>, <youtubemp3free.org>, and <youtubedownloaderfree.org>, (‘the Domain Names’) registered with NameSilo, LLC and easyDNS Technologies Inc.
The undersigned certifies that she has acted independently and impartially and to the best of 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 November 24, 2020; the Forum received payment on November 24, 2020.
On November 24, 2020; Nov 26, 2020, NameSilo, LLC; easyDNS Technologies Inc. confirmed by e-mail to the Forum that the<youtubeconverterfree.org>, <youtubemp3free.org>, and <youtubedownloaderfree.org> domain names are registered with NameSilo, LLC and easyDNS Technologies Inc. and that Respondent is the current registrant of the names. NameSilo, LLC and easyDNS Technologies Inc. have verified that Respondent is bound by the NameSilo, LLC and easyDNS Technologies Inc. registration agreements 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 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@youtubeconverterfree.org, postmaster@youtubemp3free.org, and postmaster@youtubedownloaderfree.org. Also on December 4, 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 December 30, 2020 pursuant 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel notes that despite discrepancies between the details given for the WhoIs register the Domain Names all resolve to an identical site, were all registered in December 2015 and there appears to be a formula behind the registrations, the Complainant’s mark, a generic term, the word ‘free’ and the gTLD ".org". The Respondent has not provided a response to the Complaint to dispute the allegation that the ownership of the Domain Names is in common. Accordingly the Panel finds that it is more likely than not on the evidence presented that the Domain Names are controlled by the same person and/or entity.
A. Complainant
The Complainant is the owner of the mark YOUTUBE, registered, inter alia in the USA for video sharing services with first use recorded as 2005.
The Domain Names registered in 2015 are confusingly similar to the Complainant’s trade marks, adding only generic terms and the gTLD ".org" which do not prevent said confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorised by the Complainant.
The Domain Names are being used for a website that encourages and claims to enable Internet users to download and save content from Complainant’s YouTube website in an mp3 format using the Complainant’s red screen shaped logo. When Complainant’s Counsel attempted to test Respondent’s service by entering a URL and clicking the “Convert Now!” link, Respondent’s website redirected Complainant’s counsel to the <socudoc.com> domain name and website. This website states that YouTubeMP3Free is a media client of Socudoc.com and the website features numerous advertisements to third party products and services unrelated to Complainant. The service offered by Respondent at the resolving website directly violates, or encourages users directly to violate, Complainant’s YouTube Terms of Service. Specifically, YouTube’s Terms of Service expressly prohibits (i) the downloading and saving of content from the YouTube website unless expressly authorized by Complainant, and (ii) the circumventing (or attempted circumventing) of any part of the YouTube service including features that prevent or restrict the copying or other use of content on the YouTube site.
These uses are not a bona fide offering of services or legitimate noncommercial or fair use. It is registration and use in opportunistic bad faith showing a pattern of activity and diverting Internet users for commercial gain and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark YOUTUBE, registered, inter alia in the USA for video sharing services with first use recorded as 2005.
The Domain Names registered in 2015 have been used for a competing web site purporting to convert content from the Complainant’s web site to mp3 files and using a similar red screen shaped logo to the Complainant. If the service on the Respondent’s web site is used it leads to third party pay per click links.
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 Domain Names in this Complaint combine the Complainant’s YOUTUBE mark (registered, inter alia, in the USA for video sharing services with first use in commerce recorded as 2005), the generic terms ‘converter’, ‘mp3’, or ‘downloader’, the generic term ‘free and the gTLD '.org'.
The addition of the generic words ‘converter’,‘mp3’ or ‘downloader’ and ‘free’ does not serve to distinguish the Domain Names from the Complainant’s YOUTUBE 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 '.org' does not serve to distinguish the Domain Names from the YOUTUBE mark, which is the distinctive component of the Domain Names. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the 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 Names are confusingly similar to a mark in which the Complainant has rights for the purposes of the Policy.
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial so cannot be legitimate noncommercial or fair use.
The Respondent has used the site attached to the Domain Names for competing services and pay per click links without making it clear that there is no commercial connection with the Complainant and using a similar red screen shaped logo to the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.) See Ashley Furniture Industries Inc v domain admin /private registrations aitken Gesellschaft, FA 1506001626253 (Forum July 29, 2015)(linking to pay per click links does not amount to a bona fide offering of goods and services or a legitimate noncommercial fair use).
Further the site attached to the Domain Name encourages users to breach the Complainant’s terms and conditions. See Google LLC v. Cang hua / Canghua, FA 1921973 (Forum Dec. 28, 2020) (“Encouraging Internet users to violate a complainant’s terms of service does not amount to a bona fide offer of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
The Respondent has not answered this Complaint or explained why they should be allowed to register domain names containing the Complainant’s mark.
In the opinion of the panelist the use made of the Domain Names in relation to the site attached to the Domain Names is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing services under domain names containing the Complainant’s mark and a similar logo to the Complainant. The reference to the Complainant’s services and the use of a similar logo to the Complainant shows that the Respondent was aware of the Complainant’s rights, business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to their website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant including breach of the Complainant’s terms and conditions. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). See Health Republic Insurance Company v Above.comLegal, FA 1506001622088, (Forum July 10, 2015) re diversion to pay per click links.
Further the Respondent owns a number of domain names containing the Complainant’s mark suggesting a pattern of cybersquatting activity. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”).
As such, the Panel holds that the 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 under Policy 4(b)(ii), (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 <youtubeconverterfree.org>, <youtubemp3free.org>, and <youtubedownloaderfree.org> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 31, 2020
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