Google LLC v. Registration Private / Domains By Proxy, LLC
Claim Number: FA2102001933812
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Registration Private / Domains By Proxy, LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubeto.com>, registered with GoDaddy.com, 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 February 26, 2021; the Forum received payment on February 26, 2021.
On March 1, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <youtubeto.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@youtubeto.com. Also on March 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 29,2021, 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, is the owner of YouTube.com, a major website where users can view and post videos. The YouTube website was initially launched by YouTube, Inc. in 2005 and was later acquired by Complainant in 2007. YouTube has more than 2 billion monthly logged-in users, and more than 500 hours of content are uploaded to YouTube every minute. The service is accessible to more than 95% of the world’s Internet users and each day people watch more than a billion hours of video on YouTube. Complainant owns multiple registrations of the YOUTUBE mark with the United States Patent and Trade Office (USPTO) and other national trademark registration authorities around the world, the earliest of which dates back to 2008. The <youtubeto.com> domain name, is identical or confusingly similar to Complainant’s mark because it wholly incorporates the YOUTUBE mark and adds a generic term, “to” and the generic top-level domain (“gTLD”), “.com”.
Respondent has no rights or legitimate interests because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use Complainant’s YOUTUBE mark. Respondent is not making a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use of the disputed domain name because it uses the disputed domain name to encourage users to download content from Complainant’s site in violation of Complainant’s terms of service. Respondent is also using the disputed domain name to host links to third-party malware sites.
Respondent registered and used the disputed domain name to attract users in bad faith based upon a likelihood of confusion with the YOUTUBE mark. Further, Respondent is using the disputed domain name in bad faith because its website spreads malicious software. Respondent had actual knowledge of Complainant’s YOUTUBE mark when it registered the disputed domain name due to the global fame of the mark.
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 same 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 and evidence 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 and supported 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 claims rights in the YOUTUBE mark through its multiple registrations with the USPTO and other national registation offices around the world. Regsitration of a mark with such authorities is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of some of its trademark registration certificates. With this evidence, the Panel finds that Complainant has demonstrated that it owns rights in the claimed mark under Policy ¶ 4(a)(i).
Next, Complianant argues that the <youtubeto.com> domain name is identical or confusingly similar to its YOUTUBE mark bcause it wholly incorporates the mark and adds a non-distinctive generic term and a gTLD to the mark. A domain name may be found to be cofusingly similar, under Policy ¶ 4(a)(i), if it wholly incorporates a complainant’s mark despite the addition of other words. See Amy Schumer and Muffin Schumer, Inc. v. emmali so, FA 1932326 (Forum Mar. 19, 2021), citing Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Here, the generic term “to” is added to the YOUTUBE mark along with the ”.com” gTLD. In light of these insubstantial additions, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s 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 any rights or legitimate interests in the <youtubeto.com> domain name because Respondent is not commonly known by the disputed domain name nor was Respondent authorized to use Complainant’s YOUTUBE mark. Under Policy ¶ 4(c)(ii), information set out in the WHOIS record may inform the question of whether a respondent is commonly known by the domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”) Here, Complainant and the concerned Registrar provide the WHOIS information for the disputed domain name and this identifies the registrant only as “Registration Private”. The complainant further states that it has not authorized Respondent to use the mark. Respondent has not filed a Response nor made any other submission in this case and there is nothing else in the record to indicate that Respondent is commonly known by the <youtubeto.com> domain name. As such, the Panel can find no ground upon which to hold that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent is not making a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use of the disputed domain name because the resulting website enable users to download content from Complainant’s site in violation of Complainant’s terms of service. It is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where a respondent uses a domain name to promote the unauthorized use of a complainant’s own service. 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.”). Here, from the screenshots of Respondent’s website that have been submitted into evidence, it appears that the site allows users to download videos from the YOUTUBE service onto a user’s own computer in the MP3 format. As Complainant points out, while the mark does not appear on the front page of Respondent’s website, the message “YouTube-to-MP3” is displayed on other pages eluding to the downloading of content from Complainant’s website. Complainant asserts that it is a violation of the YOUTUBE terms of service to download videos from Complainant’s website without permission and thus, Respondent’s website enables user to make such an unauthorized use. Further, the website contains pop-up links to third-party malware sites and no disclaimer or other clarification to inform users that the site is not owned by, associated or affiliated with, or otherwise endorsed by Complainant and so it does not pass the test for legitimate use set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Based on this unauthorized use of a confusingly similar domain name, the Panel finds that Respondent is not making a bona fide offering of goods and services nor a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii).
Complainant further argues that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name because its website is being used to promote malware. A domain name is not being used to make a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where it redirects users to a website that attempts to install malicious software. See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Based upon screenshots provided by Complainant, when a user clicks on certain links that appear on Respondent’s website (e.g., “Free Extension Might Be Required” and “System scanning is recommended”), they will be directed to another website that encourages users to download software named “Cookie Muncher”. With no participation in this case by Respondent or any other explanation of its actions, the Panel finds that Complainant has made out an unrebutted prima facie case that Respondent is not making a bona fide offering of goods or services and that it is not making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent must have had actual knowledge of Complainant’s rights in the asserted mark. Where a respondent uses a domain name that includes a mark which has substantial fame and notoriety associated with a complainant, it is reasonable to find that a respondent had actual knowledge of the complainant’s rights in that 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).”). Here, Complainant claims that its YOUTUBE mark is famous. It is used in association with a website that is amongst the most widely used in the world. In support, it submits such items as screenshots of its archived and current websites, independent traffic and ratings statistics, as well as news articles discussing the mark. The Panel agrees with Complainant’s assertion of fame and finds it a near certainty that Respondent registered the <youtubeto.com> domain name with actual knowledge of the YOUTUBE mark. In any event, use of the YOUTUBE mark on Respondent’s website indicates that it did have such knowledge of the mark.
Complainant then argues that Respondent registered and uses the disputed domain name in violation of Policy ¶ 4(b)(iii). Bad faith can be found where a respondent disrupts a complainant’s business by enabling users to violate the complainant’s terms of use. See Activision Publishing, Inc. v. Zachariah Russell, FA 1917597 (Forum Nov. 20,2020) (where Respondent’s website offer “accounts with verified phone numbers for sale to cheaters in connection with Complainant’s [video game] products”, the Panel found that “[u]se of a disputed domain name to disrupt a complainant’s ability to run its business is evidence of bad faith under Policy ¶ 4(b)(iii)”). Further, where a respondent infringes on a complainant’s mark, for commercial gain, by attracting internet users based upon a likelihood of confusion as to the resulting website’s association with a complainant, bad faith may be found under Policy ¶ 4(b)(iv). This has been held to be the case where such use involves enabling users to violate the terms of use of a complainant’s own services. See Snap Inc. v. micheal smith, FA 1894441 (Forum May 27, 2020) (finding bad faith where Respondent used an infringing domain name to monetize their private Snapchat accounts to receive adult and pornographic photos and/or video in violation of Snapchat’s terns of service). Complainant supplies screenshots of Respondent’s <youtubeto.com> website which shows that it displays the header “YouTube-to-MP3” and invites users to “Download Internet Videos” and “Download MP4, HD playlists and channels from the Internet easily with this Internet downloader”. The site further contains links which, as shown by Complainant’s screenshots, users are invited to download a “secure Chrome Extension. This will allow you to view and download secure filetypes.” This link directs users to another website that offers software named “Cookie Muncher”. From this evidence the Panel finds it reasonable to conclude that the disputed domain name draws users to Respondent’s website based upon its similarity to the YOUTUBE mark and purports to allow users to download content that is contained on Complainant’s website in violation of Complainant’s own terms of use. As Respondent has not participated in this case or otherwise offered any defense, upon a preponderance of the evidence presented, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii). However, as Complainant has not claimed that Respondent is seeking commercial gain from its use of the disputed domain name, the Panel will not make any finding with respect to Policy ¶ 4(b)(iv).
Complainant further argues that Respondent registered the <youtubeto.com> domain name in bad faith because its website hosts links to malicious software. Bad faith use, under Policy ¶ 4(a)(iii), may be found under such circumstances. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (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.”). As noted above, direction of users to other webpages that encourage the download of malicious software – one called “Cookie Muncher” and another to a third-party link claiming that “System scanning is recommended” – which Complainant claims are known malware websites, provides further support for the conclusion that the disputed domain name was registered in 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 <youtubeto.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 31, 2021
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