Google LLC v. Mingde wang
Claim Number: FA2103001937336
Complainant is Google LLC ("Complainant"), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Mingde wang ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--outube-9ya.com>, registered with Dynadot, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2021; the Forum received payment on March 21, 2021.
On March 23, 2021, Dynadot, LLC confirmed by email to the Forum that the <xn--outube-9ya.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@xn--outube-9ya.com. Also on March 23, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 April 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 (together with a predecessor in interest) has delivered digital content and provided related services under the YOUTUBE mark since 2005. YouTube rapidly became the leading online video sharing site, with 6.1 million hosted videos and 500,000 user accounts by August 2006; it now has more than 2 billion monthly logged-in users and localized versions in more than 100 countries. Complainant owns longstanding trademark registrations for YOUTUBE in the United States and other jurisdictions worldwide. Complainant claims that the mark is famous around the world, citing a previous decision under the Policy recognizing it as such. See Google Inc. v. Alex Dori, FA 1623672 (Forum July 13, 2015).
Respondent is the registrant of the disputed domain name <xn--outube-9ya.com>, which was created in May 2008. The domain name is being offered for sale on a domain name marketplace for $799. In addition to the marketplace listing, Complainant has provided a screenshot indicating that the domain name is being used for a website soliciting purchase inquiries. Complainant states that Respondent is not commonly known by the disputed domain name and has not been authorized or licensed to use Complainant's YOUTUBE mark.
Complainant contends on the above grounds that the disputed domain name <xn--outube-9ya.com> is confusingly similar to its YOUTUBE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <xn--outube-9ya.com> is an internationalized domain name (IDN) rendered in ASCII characters using Punycode; its Unicode equivalent is <ýoutube.com>. The disputed domain name thus corresponds to Complainant's registered YOUTUBE trademark, substituting the Unicode character "ý" (U+00FD, Latin Small Letter Y with Acute) for the "y" and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Google LLC v. Milen Radumilo, FA 1930756 (Forum Mar. 3, 2021) (finding <xn--yotube-qya.com> (Punycode for <yoútube.com>) confusingly similar to YOUTUBE); Facebook, Inc., Instagram, LLC v. Mingde Wang, D2019-2600 (WIPO Mar. 10, 2000) (finding <xn--instagram-5jf.com> (Punycode for <i̇nstagram.com>) confusingly similar to INSTAGRAM). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to solicit purchase offers for the domain name itself. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., United Services Automobile Association v. Cyan Yo, FA 1931638 (Forum Mar. 15, 2021) (finding lack of rights or interests in similar circumstances); State Farm Mutual Automobile Insurance Co. v. Kaparthi Jonnalagadda, FA 1927593 (Forum Feb. 4, 2021) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name."
Respondent registered or acquired a domain name corresponding to Complainant's famous mark without authorization and is using it for the sole purpose of soliciting purchase offers for the domain name, listing it at a domain name marketplace at a price that the Panel infers to be far in excess of Respondent's out-of-pocket costs. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., State Farm Mutual Automobile Insurance Co. v. Kaparthi Jonnalagadda, supra (finding bad faith in similar circumstances); Google LLC v. HuangPeiFang, FA 1908941 (Forum Sept. 14, 2020) (same). The Panel also notes Respondent's apparent history of bad faith domain name registrations. See Facebook, Inc., Instagram, LLC v. Mingde Wang, supra (finding pattern of bad faith domain name registrations targeting well-known trademarks). The Panel concludes that the domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--outube-9ya.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 16, 2021
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