Google LLC v. A M
Claim Number: FA2105001943916
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is A M (“Respondent”), AE.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtube-video-downloader.xyz>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2021; the Forum received payment on May 4, 2021.
On May 6, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <youtube-video-downloader.xyz> 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 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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-video-downloader.xyz. Also on May 12, 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 June 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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
i) Complainant, Google LLC, operates a world-wide technology company. Complainant has rights in the YOUTUBE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,525,802, registered Oct. 28, 2008). The disputed domain name is confusingly similar to Complainant’s YOUTUBE mark, only differing by adding the generic terms “video” and “downloader” with two hyphens and adding the “.xyz” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain and is neither an authorized user or licensee of the YOUTUBE mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent purports to allow users access to software which supposedly allows Internet users to download content off of Complainant’s <youtube.com> website, in violation of Complainant’s YouTube Terms of Service. Complainant also contends that the software which Respondent distributes contains malware which hijacks Internet users’ browsers and phishes for personal and financial information. The disputed domain name also displays pay-per-click advertisements which further suggests Respondent’s lack of rights and legitimate interests in the disputed domain.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent directs Internet users to its website which purports to allow users to download content off of Complainant’s <youtube.com> website in violation of Complainant’s YouTube Terms of Service, disrupting Complainant’s business and likely leading to commercial gain for Respondent. Respondent’s website also distributes malware and attempts to phish for users’ personal and financial information. The disputed domain name also displays monetized advertisements to users, further evincing bad faith on part of Respondent. Respondent also provided false or misleading WHOIS information when registering the disputed domain name. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the YOUTUBE mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on October 23, 2018.
2. Complainant has established rights in the YOUTUBE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,525,802, registered Oct. 28, 2008).
3. Respondent purports to offer Internet users software to allow them to download videos from Complainant’s <youtube.com> website in violation of Complainant’s YouTube Terms of Service.
4. Respondent uses the disputed domain name in furtherance of distributing malware and phishing for users’ personal and financial information.
5. Respondent uses the disputed domain name to display pay-per-click advertisements.
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”).
Complainant asserts rights in the YOUTUBE mark through its registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 3,525,802, registered Oct. 28, 2008). Thus, the Panel finds Complainant has rights in the YOUTUBE mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s YOUTUBE mark, only differing by the addition of the generic terms “video” and “downloader,” adding a hyphen between each term and the mark, and adding the “.xyz” gTLD. Pervious panels have held that such changes may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s YOUTUBE 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), then 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 argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain and is neither an authorized user or licensee of the YOUTUBE mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “A M” as the registrant of the disputed domain name. The Panel therefore finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead purports to offer Internet users software to allow them to download videos from Complainant’s <youtube.com> website in violation of Complainant’s YouTube Terms of Service. Such use displays a general intent to divert Internet users to Respondent’s website and may not qualify as either a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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.”). Complainant provides screenshots of the resolving website for the disputed domain name, along with a copy of its YouTube Terms of Service as evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. Thus, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services.
Complainant contends that Respondent uses the disputed domain name in furtherance of distributing malware and phishing for users’ personal and financial information, which also does not qualify as any bona fide offering of goods or services or a legitimate noncommercial or fair use. Previous panels have held that use of an infringing domain name to distribute malware and phish for users’ data does not meet the standards of either Policy ¶¶ 4(c)(i) or (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving website for the disputed domain name, which asks users to download software which Complainant contends takes over users’ Internet browsers and seeks out sensitive personal and financial information. The Panel finds that the disputed domain name is used to distribute malware and phish for information which does not qualify as any bona fide offering of goods or services or a legitimate noncommercial or fair use.
Additionally, Complainant argues that Respondent uses the disputed domain name to display monetized advertisements, which further indicate Respondent has no rights or legitimate interests in the disputed domain name. Per Policy ¶¶ 4(c)(i) and (iii), use of an infringing domain name to display such advertisements does not amount to a bona fide offer of goods or services, nor can it be a legitimate noncommercial or fair use. See Insomniac 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.”). The screenshots provided by Complainant prove that Respondent uses the disputed domain name to display pay-per-click advertisements. Therefore, the Panel finds that use of the disputed domain name to display monetized advertisements does not amount to a bona fide offer of goods or services, nor can it be a legitimate noncommercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith as Respondent diverts users to its own website and allegedly allows users to download content off of Complainant’s website, violating Complainant’s YouTube Terms of Service. Previous panels have held under similar circumstances that such use qualifies as competing use, and displays both bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). As previously noted, Complainant provides screenshots of the resolving website for the disputed domain name as evidence of Respondent’s competing use. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also claims that Respondent uses the disputed domain name to display monetized advertisements, further indicating bad faith attraction to commercial gain. Under Policy ¶ 4(b)(iv), use of an infringing domain name to display click-through advertisements that generate revenue for a domain holder qualifies as relevant bad faith. See 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)). Screenshots of the disputed domain display Respondent’s attempt to generate revenue through pay-per-click advertisements. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant maintains that Respondent uses the disputed domain name to distribute malware and phish for users’ personal and financial information, which further indicates bad faith. Panels have previously held that such use of an infringing domain name qualifies as bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Screenshots of the disputed domain name along with articles concerning the alleged malware are provided by Complainant. The Panel notes that Respondent uses the disputed domain to distribute malware in furtherance of a phishing scheme, and thus it finds bad faith under Policy ¶ 4(a)(iii).
Additionally, Complainant argues that Respondent registered the disputed domain with actual knowledge of Complainant’s rights in the YOUTUBE mark. Under Policy ¶ 4(a)(iii), actual knowledge of another’s trademark rights sufficiently demonstrates bad faith, and may be established by the fame of a mark and the use Respondent makes of a disputed domain. 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”). Complainant provides evidence of the notoriety of its YOUTUBE mark in the form of various articles and reports on <youtube.com>, and Respondent purports to allow Internet users to download content off of Complainant’s website. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent registered the disputed domain with actual knowledge of Complainant’s rights in the YOUTUBE mark which qualifies as 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 <youtube-video-downloader.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 9, 2021
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