Google LLC v. Dmitriy Kalmykov / Teriks Group Corp
Claim Number: FA2103001939624
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Dmitriy Kalmykov / Teriks Group Corp (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <convyoutube.com>, registered with NameCheap, Inc.
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 March 30, 2021; the Forum received payment on March 30, 2021.
On March 31, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <convyoutube.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 April 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@convyoutube.com. Also on April 6, 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 May 3, 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.
A. Complainant
Complainant contends as follows:
Complainant, Google LLC, is the owner of the YouTube video sharing service.
Complainant has rights in the YOUTUBE mark based on registration with the United States Patent and Trademark Office (USPTO).
The at-issue domain name, <convyoutube.com>, is identical or confusing similar to Complainant’s mark because it incorporates Complainant’s YOUTUBE mark while adding the term “conv” and the “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent does not have any rights or legitimate interests in the <convyoutube.com> domain name because Respondent is not commonly known by the <convyoutube.com> domain name, nor has Complainant authorized Respondent to use the YOUTUBE mark. Additionally, Respondent is not using the <convyoutube.com> domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent diverts internet users away from Complainant’s website to Respondent’s own website which allows users to download videos in violation of Complainant’s terms of use.
Respondent registered and uses the <convyoutube.com> domain name in bad faith. Respondent uses the <convyoutube.com> domain name to disrupt Complainant’s business and create confusion as to Complainant’s affiliation with Respondent’s website for Respondent’s commercial gain. Additionally, Respondent had actual knowledge Complainant’s rights in the YOUTUBE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the YOUTUBE mark.
Complainant’s rights in the YOUTUBE mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <convyoutube.com> domain name to facilitate a service that enables internet users to directly violate Complainant’s YouTube Terms of Service by downloading YOUTUBE videos so that they may be converted to an alternative media format.
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 demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4 (a)(I). 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).”).
The at-issue domain name consists of Complainant’s YOUTUBE trademark prefixed by the term “conv” with all followed by the top level domain name “.com.” The differences between the at-issue <convyoutube.com> domain name and Complainant’s YOUTUBE trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. In fact, the term “conv,” which is an abbreviated form of “convert” or “conversion,” is suggestive of Complainant’s video sharing business and thus only adds to any confusion between the <convyoutube.com> domain name and Complainant’s YOUTUBE mark. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <convyoutube.com> domain name is confusingly similar or identical to Complainant’s YOUTUBE trademark. See Oki Data Ams., 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”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under 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 <convyoutube.com> 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.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Dmitriy Kalmykov / Teriks Group Corp” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <convyoutube.com> domain name. 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).
Respondent’s at-issue domain name diverts internet users away from Complainant’s website to Respondent’s own website which allows and encourages users to download YOUTUBE videos in violation of Complainant’s terms of use. Respondent’s use of the confusingly similar <convyoutube.com> domain name in this manner constitutes 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). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Google LLC v. Host Master / 1337 Services LLC, FA 1935183 (Forum Apr. 5, 2021) (Finding the disputed domain name which “encourages and enables users to violate Complainant's YouTube Terms of Service” did not give rise to rights or legitimate interests.)
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 <convyoutube.com> domain name was registered and used in bad faith. As discussed below without limitation, circumstances are present which permit the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned regarding rights and legitimate interests, Respondent offers services on its <convyoutube.com> website which enable website visitors to breach Complainant’s YouTube Terms of Service regarding the downloading of content without authorization. Respondent’s offering of services, directly or indirectly, that facilitate the downloading of content from YOUTUBE in violation of Complainant’s terms of use is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the domain name per Policy ¶ 4(b)(iii). See Google LLC v. Domain Manager, FA 1755084 (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 PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).
Next, Respondent registered and uses the <convyoutube.com> domain name to attract internet users to Respondent’s website for Respondent’s own gain by creating a likelihood of confusion between the domain name Complainant’s trademark. Such use of the domain name shows bad faith under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv)).
Finally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark when it registered <convyoutube.com> as a domain name. Respondent’s actual knowledge is evident from the worldwide notoriety of Complainant’s YOUTUBE trademark and from Respondent’s prominent references to Complainant, including the display of Complainant’s trademark and logo, on the <convyoutube.com> website. Respondent’s registration and use of its confusingly similar domain name with prior knowledge of Complainant’s rights therein further shows Respondent’s 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <convyoutube.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 4, 2021
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