Google LLC v. Milen Radumilo
Claim Number: FA2102001930756
Complainant is Google LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--yotube-qya.com>, registered with CommuniGal Communication Ltd..
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 February 3, 2021; the Forum received payment on February 3, 2021.
On February 4, 2021, CommuniGal Communication Ltd. confirmed by e-mail to the Forum that the <xn--yotube-qya.com> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. 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 February 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@xn--yotube-qya.com. Also on February 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 March 2, 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: INTERNATIONALIZED DOMAIN NAME
The domain name in dispute, <yoútube.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--yotube-qya.com>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the characters properly in the <yoútube.com> domain name, it first had to encode it into the <xn--yotube-qya.com> domain name.
IDNs and their PUNYCODE translations are essemtually equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). Therefore, the Panel finds that the <yoútube.com> domain name is the same as its PUNYCODE translation, <xn--yotube-qya.com>, for purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant owns and operates a leading internet search service as well as other online services including but not limited to video sharing.
Complainant has rights in the YOUTUBE mark through its registration of the marks with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <xn--yotube-qya.com> domain name are identical or confusingly because it wholly incorporates Complainant’s YOUTUBE mark, merely using PUNYCODE to translate the marks and adding an accent to the letter “u” and appending the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <xn--yotube-qya.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent any rights in the YOUTUBE mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent suggests affiliation with Complainant and offers software downloads to users.
Respondent registered and uses the <xn--yotube-qya.com> domain name in bad faith. Respondent displays a history of bad faith registration. Respondent also passes itself off as Complainant to divert Internet users for commercial gain. Finally, Respondent registered the <xn--yotube-qya.com> domain name with actual knowledge of Complainant’s rights in the YOUTUBE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in YOUTUBE.
Complainant’s rights in YOUTUBE existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <xn--yotube-qya.com> [<yoútube.com>] domain name to exploit Complainant’s YOUTUBE trademark to perpetrate a phishing scam.
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 the YOUTUBE mark evidences Complainant’s rights in such mark for the purposes of 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.”).
The at-issue domain name consists of an IDN version of Complainant’s YOUTUBE trademark followed by a necessary top-level, here “.com.” The <xn--yotube-qya.com> domain name is identical or confusingly to Complainant’s trademark because it wholly incorporates Complainant’s YOUTUBE mark, merely using PUNYCODE to translate the marks, adding an accent the letter “u,” and appending the “.com” gTLD. Respondent’s addition of an accent and necessary gTLD fails to distinguish the at-issue domain name from Complainant’s trademark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010) (finding <bıng.com> [xn--bng-jua.com] confusingly similar to BING and noting, “The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶ 4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark”).
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 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”).
Respondent lacks both rights and legitimate interests in respect of the <xn--yotube-qya.com> domain name. Respondent is not authorized to use Complainant’s YOUTUBE 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 “Milen Radumilo.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <xn--yotube-qya.com> domain name or by the YOUTUBE mark. The Panel therefore concludes that Respondent is not commonly known by the at-issue 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 and as mentioned far below regarding bad faith, the <xn--yotube-qya.com> domain name is ultimately used to distribute malware. Upon browsing to the at-issue domain name, internet users are first sent to a page stating, “VPN Update”. When users click “Install” either intentional, or more likely inadvertently since they are at this point uninformed as to why they need such an “update,” they are redirected to an app store to download security software purportedly install a secure VPN application. The fact that the necessity of the update software is vague considering that it pretends to be an update when there may be no underlying software to update, that the download dialog pops-up and in essence forces itself on accidental “customers” and that its vendor is not well known and has no apparent relation to the domain name, make it more likely than not that the download software is malware and that the at-issue domain name is nothing more than a vector for such malware. Respondent’s use of the at-issue domain name to redirect users to a third party download service, even without any intent to spread malicious software, fails to indicate any bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) of the <xn--yotube-qya.com> domain name. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a 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 pursuant to Policy ¶ 4(a)(ii).
Respondent’s <xn--yotube-qya.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 has suffered multiple adverse UDRP decisions where Respondent targeted famous brands and companies. The record discloses Respondent’s overt pattern of bad faith domain name registration and use. Respondent’s pattern of cybersquatting suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”).
Additionally and as mentioned above regarding rights and legitimate interests, Respondent uses the <xn--yotube-qya.com> domain name to facilitate the downloading of malicious or unwanted software to third parties. Respondent’s distribution of malware via the at-issue domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
Finally, Respondent registered <xn--yotube-qya.com> knowing that Complainant had trademark rights in the YOUTUBE trademark. Respondent’s prior knowledge is evident given the mark’s world renowned notoriety. It follows that Respondent intentionally registered the at-issue domain name so that it might improperly exploit the domain name’s trademark value rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark also indicates that Respondent registered and used the <xn--yotube-qya.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 <xn--yotube-qya.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 3, 2021
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