Google LLC v. zhijiang kun
Claim Number: FA2012001926346
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is zhijiang kun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubemp4mp3.com>, registered with Xin Net Technology Corporation.
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 December 28, 2020; the Forum received payment on December 28, 2020.
On December 30, 2020, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <youtubemp4mp3.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 January 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2021 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@youtubemp4mp3.com. Also on January 4, 2021, 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 January 26, 2021, 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.
PRELIMINARY ISSUE: SUPPORTED LANGUAGE REQUEST
The relevant Registration Agreement for the at-issue domain is written in Chinese making the favored language of the proceedings also in Chinese. However, pursuant to UDRP Rule 11(a), the Panel may find that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Chinese would unfairly burden Complainant, while conducting the proceeding in English would not unfairly burden Respondent. Respondent targeted a U.S.-based company by incorporating its famous YOUTUBE mark into the at-issue domain name. Doing so constitutes evidence that Respondent will not be prejudiced if the proceedings were to be conducted in English. See Morgan Stanley v. Peng Bi / Bi Peng, FA1709188 (Forum Feb. 16, 2017) (choosing to conduct the proceedings in English in part because “the disputed domain names contain a famous English language mark); see also, Textron Innovations Inc. v. xie rui dong, FA1750895 (Forum May 26, 2017) (selecting English as the language of the proceeding in part because the “[r]espondent targeted a U.S.- based company by registering the . . . domain name” and “utilized Anglican characters in its domain”). The<youtubemp4mp3.com> website’s content is in English and the domain itself comprises an English top-level with English based text making up its second-level. . In fact, the <youtubemp4mp3.com> website incorporates several references to domain names using Latin characters, numerous strings of Latin numerals, references to an email address at the “@gmail.com” extension, and numerous personal names depicted in Latin characters. Moreover Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English. Therefore in light of the foregoing, the Panel finds that Respondent is conversant in English and that requiring the proceeding to be in Chinese would unfairly burden Complainant and thus may proceed in English.
A. Complainant
Complainant contends as follows:
The YOUTUBE mark is a coined term that was created by its then-owner YouTube, Inc. in February 2005 for use as the brand of a video sharing service.
The YouTube.com website was launched on April 24, 2005, and the YOUTUBE mark and related logos have been prominently featured since then at the website and otherwise in marketing for the service.
Complainant has rights in the YOUTUBE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <youtubemp4mp3.com> is identical or confusingly similar to Complainant’s YOUTUBE mark as it merely adds the non-distinctive, generic terms “MP4” and “MP3” and the non-distinctive top-level domain “.com”.
Respondent lacks rights or legitimate interests in the <youtubemp4mp3.com> domain name. Respondent is not commonly known by the at-issue domain name nor has Respondent been authorized by Complainant to use the YOUTUBE mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses the at-issue domain name in connection with pornographic material and pay-per-click advertisements.
Respondent registered and uses the <youtubemp4mp3.com> domain name in bad faith. Respondent uses the YOUTUBE mark to attract internet users to Respondent’s at-issue domain name and to compete with Complainant. Respondent also uses the domain name in connection with pornography and pay-per-click advertising. Furthermore, Respondent had actual knowledge of Complainant’s rights to the YOUTUBE mark prior to registering the domain name based on the famous nature of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the YOUTUBE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the YOUTUBE trademark.
Respondent uses the at-issue domain name in connection with pornographic material and pay-per-click advertisements.
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 or identical to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its YOUTUBE trademark. Any relevant national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <youtubemp4mp3.com> domain name contains Complainant’s YOUTUBE trademark followed by the suggestive terms “mp4” and “mp3” with all followed by a domain name-necessary top-level domain name, here “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <youtubemp4mp3.com> domain name from Complainant’s YOUTUBE trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <youtubemp4mp3.com> domain name is confusingly similar to Complainant’s YOUTUBE trademark. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
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. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “zhijiang kun” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <youtubemp4mp3.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <youtubemp4mp3.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar <youtubemp4mp3.com> domain name to address a website used in connection with pornographic material and pay-per-click advertisements. Respondent’s use of the confusingly similar domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”); see also insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
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).
Respondent’s <youtubemp4mp3.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses its confusingly similar domain name to misdirect internet users seeking Complainant to Respondent’s <youtubemp4mp3.com> website. There, Respondent further exploits the goodwill found in Complainant’s trademark by capitalizing on the content of Respondent’s website for commercial gain. Using the domain name to feign an affiliation between Complainant and Respondent when there is none so that Respondent may benefit demonstrates Respondent’s bad faith registration and use of the at-issue domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)).
Moreover and as mentioned above, Respondent registered and uses the <youtubemp4mp3.com> domain name in connection with pornography and pay-per-click advertising. Doing so further shows Respondent’s bad faith pursuant to Policy ¶ 4 (b)(iv) and otherwise. See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also, Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”).
Finally, Respondent registered <youtubemp4mp3.com> knowing that Complainant had trademark rights in the YOUTUBE mark. Respondent’s prior knowledge is evident from the worldwide notoriety of Complainant’s trademark. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <youtubemp4mp3.com> domain name in bad faith 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubemp4mp3.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 27, 2021
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