Google LLC v. Wu Di
Claim Number: FA2105001943822
Complainant is Google LLC ("Complainant"), represented by John C. Nishi of Dickinson Wright PLLC, Michigan, USA. Respondent is Wu Di ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubemusicdownloader.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2021; the Forum received payment on May 4, 2021.
On May 4, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <youtubemusicdownloader.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 May 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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@youtubemusicdownloader.com. Also on May 5, 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 May 28, 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, and 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, China, and other jurisdictions worldwide. Complainant claims that the mark is famous, citing a previous decision under the Policy recognizing it as such. See Google Inc. v. Alex Dori, FA 1623672 (Forum July 13, 2015).
The disputed domain name <youtubemusicdownloader.com> was registered in April 2008. It is being used for a website that promotes and makes available "YouTube Music Downloader," software that enables Internet users to download and save content from Complainant's YouTube website in various formats. Complainant states that Respondent's website and software violate or encourage users to violate Complainant's YouTube Terms of Service, which prohibit users from downloading content from YouTube without authorization and from attempting to circumvent features that restrict the copying of YouTube content. Complainant alleges that the website "prominently features the YOUTUBE mark in a brand-like manner at the top of and throughout the page." Complainant states that neither Respondent nor its software are authorized by, endorsed by, or otherwise associated with Complainant, and complains that Respondent's website does not include a disclaimer or clarification to inform users of this fact.
Complainant contends on the above grounds that the disputed domain name <youtubemusicdownloader.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 ("WIPO Overview"), § 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 <youtubemusicdownloader.com> incorporates Complainant's registered YOUTUBE trademark, adding the generic or descriptive terms "music" and "downloader" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Google LLC v. Robert Stabile, FA 1926977 (Forum Feb. 15, 2021) (finding <hdyoutubedownloaderfree.com> confusingly similar to YOUTUBE); Google LLC v. Rahul Kukreja, FA 1926984 (Forum Feb. 5, 2021) (finding <youtube-video-converter.net> confusingly similar to YOUTUBE); Google Inc. v. Gintog / Yuriy Gintog, FA 1456306 (Forum Sept. 21, 2012) (finding <youtubedownloader.org> confusingly similar to YOUTUBE). 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 it is being used for a website that promotes software intended for use with Complainant's YouTube service, albeit in a manner that likely violates the terms under which that service is offered.
Complainant alleges that the website uses Complainant's mark "in a brand-like manner at the top of and throughout the page." The Panel views this allegation with some skepticism, as all or nearly all of the instances of Complainant's mark appear either as nominative references to Complainant's website or as part of the name of Respondent's software, which itself arguably uses Complainant's mark in a nominative manner. (For example: "YouTube Music Downloader is able to download music videos on YouTube too.")
Complainant also states that Respondent's website fails to include a disclaimer or clarification to inform users that the domain name and website are not authorized by or associated with Complainant. The website does include a statement recognizing Complainant's trademark rights in the YOUTUBE mark, although it is buried at the very end of a long page and does not explicitly state that Respondent and its software are not connected with Complainant.
The Panel notes that the main page of the website includes approximately 83 instances of the YOUTUBE mark, far more than the number that would be needed to describe Respondent's software. In addition, the website itself acknowledges that Respondent's software is not designed exclusively for use with Complainant's YouTube service; to the contrary, it states that the software also works with "Daily Motion, Facebook, Twitter, Google Video, Yahoo Video, Blip, Metacafe, Revver, Veoh, Vimeo, and other popular video sites."
A domain name registrant may be entitled to use a mark without the mark owner's permission when promoting its own goods or services that have some connection to those of the mark owner. See WIPO Overview, supra, § 2.8.1 (citing Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)). However, the mark may be used only to the extent necessary to identify the registrant's goods or services; the use must be limited to those goods or services; and there must be an accurate and prominent disclosure of the relationship with the mark owner. See id.; Pearson Education Ltd. & Pearson plc v. ISNPK / ISN, FA 1825490 (Forum Feb. 18, 2019). None of those requirements appear to be met in this case, indicating that Respondent's use of the disputed domain name is unlikely to give rise to rights or legitimate interests.
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)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered and is using a domain name that incorporates Complainant's mark to attract Internet users to Respondent's website. The website promotes software designed for use with Complainant's service as well as other competing services; it uses Complainant's mark to a much greater extent than necessary to describe this software; and it fails to include a prominent or clear disclosure of the relationship between the parties (or, in this case, the lack of such a relationship). In addition, Complainant alleges that Respondent's website and software violate or encourage users to violate Complainant's Terms of Service, and Respondent has not come forward to dispute this allegation. See, e.g., Google LLC v. Host Master / 1337 Services LLC, FA 1933662 (Forum Mar. 29, 2021) (finding disruption under paragraph 4(b)(iii) based in part upon encouragement to violate terms of service); Google LLC v. Robert Stabile, supra (same). The Panel finds that the disputed 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 <youtubemusicdownloader.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 1, 2021
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