Google LLC v. Chen Hui
Claim Number: FA2103001935156
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Chen Hui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtube-to-mp3.online>, registered with Chengdu West Dimension Digital Technology Co., Ltd..
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2021; the Forum received payment on March 2, 2021.
On March 3, 2021, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <youtube-to-mp3.online> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 March 4, 2021, the Forum served the Complaint and all Annexes, including a Chinese language 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@youtube-to-mp3.online. Also on March 4, 2021, the Chinese language 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 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
PRELIMINARY ISSUE: REQUIRED LANGUAGE OF COMPLAINT
Complainant has alleged that, because Respondent is conversant in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that, since the domain name resolves to a website that is completely in English, Respondent clearly understands English and is comfortable operating in the English language. The Panel agrees and determines that his proceeding will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <youtube-to-mp3.online> domain name is confusingly similar to Complainant’s YOUTUBE mark.
2. Respondent does not have any rights or legitimate interests in the <youtube-to-mp3.online> domain name.
3. Respondent registered and uses the <youtube-to-mp3.online> domain name in bad faith.
B. Respondent did not file a Response.
Complainant holds a registration for its well-known YOUTUBE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,525,802, registered October 28, 2008).
Respondent registered the <youtube-to-mp3.online> domain name on May 4, 2016, and uses it to violate Complainant’s YouTube Terms of Service, and to display pay-per-click advertising.
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 Panel finds that Complainant has rights in the YOUTUBE mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <youtube-to-mp3.online> domain name incorporates Complainant’s YOUTUBE mark and merely adds: (i) the non-distinctive, generic terms “to” and “mp3,” (ii) two hyphens, and (iii) the non-distinctive top-level domain “.online”. The addition of generic terms, hyphens, and a TLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) (finding the <morgan-stanley.xyz> domain name identical to complainant’s MORGAN STANLEY mark, because “the use of a hyphen and addition of a gTLD are irrelevant in determining the identical or confusingly similar nature of a disputed domain name under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <youtube-to-mp3.online> domain name is confusingly similar to Complainant’s YOUTUBE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show 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 contends that Respondent lacks rights or legitimate interests in the <youtube-to-mp3.online> domain name, as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the YOUTUBE mark. The WHOIS information for the disputed domain name lists the registrant as “Chen Hui.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also 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)”).
Complainant argues that Respondent fails to use the <youtube-to-mp3.online> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the disputed domain name to violate Complainant’s YouTube Terms of Service and for pay-per-click advertising. Using a confusingly similar domain name to enable a violation of terms of service, or in connection with pay-per-click advertising does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (no rights or legitimate interests created by the respondent’s use of the <listentoyoutube.com> domain name in connection with a website that enabled Internet users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Services); see also nsomniac 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.”). Complainant demonstrates that the disputed domain name resolves to a commercial website that encourages Internet users to download and save content from Complainant’s YouTube website, a violation of Complainant’s YouTube Terms of Service. Complainant also shows that Respondent’s website redirects users to pay-per-click advertising for products and/or services unrelated to Complainant. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <youtube-to-mp3.online> domain name in bad faith as Respondent uses the disputed domain name to enable users to violate Complainant’s Terms of Service and to display pay-per-click advertising. Using a disputed domain name to enable users to violate a complainant’s terms of service or to display pay-per-click advertising can demonstrate bad faith under Policy ¶ 4(b)(iv) and Policy ¶ 4(a)(iii). See Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (finding use of the <listentoyoutube.com> domain name in association with a website that enabled download of content from Google’s YouTube website in violation of Google’s YouTube Terms of Service to constitute bad faith use and registration under the Policy); see also 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)). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and Policy ¶ 4(a)(iii).
Complainant argues that, given the extensive use, media coverage and fame of Complainant’s YOUTUBE mark, Complainant’s worldwide trademark filings, Respondent’s registration of the domain name that wholly incorporate the YOUTUBE mark, and Respondent’s direct references to Complainant’s YouTube service on Respondent’s website, it is inconceivable that Respondent registered the disputed domain name independently and without actual knowledge of Google’s YOUTUBE marks. The Panel agrees and finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the YOUTUBE mark, showing further bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that Complainant has satisfied 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 <youtube-to-mp3.online> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 31, 2021
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