Google LLC v. Cyber Dog
Claim Number: FA2107001957447
Complainant is Google LLC (‘Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Cyber Dog (‘Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubetomp3.tech>, registered with NameCheap, Inc..
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2021; the Forum received payment on July 29, 2021.
On July 30, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <youtubetomp3.tech> 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 August 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@youtubetomp3.tech. Also on August 2, 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 August 25, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
The YOUTUBE mark is a coined term that was created by its then-owner YouTube, Inc. in February 2005 for use as the brand of a video sharing service. Complainant has rights in the YOUTUBE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (‘USPTO”) (e.g., Reg. No. 3,525,802, registered October 28, 2008). Respondent’s <youtubetomp3.tech> domain name is confusingly similar to Complainant’s YOUTUBE mark as it contains the entire mark and merely adds the non-distinctive, generic terms “to” and “mp3,” and the non-distinctive top-level domain “.tech.”
Respondent lacks rights or legitimate interests in the <youtubetomp3.tech> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the YOUTUBE mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses it in connection with a website that enables Internet users to directly violate Complainant’s YouTube Terms of Service and to host pay-per-click advertising for third party products and services unrelated to Complainant.
Respondent registered and uses the <youtubetomp3.tech> domain name in bad faith. Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s disputed domain name for financial gain. Respondent also uses the disputed domain name to enable users to violate Complainant’s Terms of Service. Furthermore, Respondent had actual knowledge of Complainant’s rights to the YOUTUBE mark prior to registering the disputed domain name based on Respondent’s use of Complainant’s famous mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <youtubetomp3.tech> domain name.
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 Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 3,525,802, registered October 28, 2008). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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 Panel finds that Complainant has demonstrated rights in the YOUTUBE mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <youtubetomp3.tech> domain name is confusingly similar to Complainant’s YOUTUBE mark as it contains the entire mark, merely adding the non-distinctive, generic terms “to” and “mp3,” and the non-distinctive top-level domain “.tech.” The addition of generic terms and a TLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (‘The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (‘A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds that Respondent has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <youtubetomp3.tech> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the YOUTUBE mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See 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)”). The WHOIS information for the disputed domain name lists the registrant as “Cyber Dog,” and Complainant argues there is no evidence to suggest that Respondent was authorized to use the YOUTUBE mark. The Panel finds that the Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <youtubetomp3.tech> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it in connection with a website that enabled Internet users to directly violate Complainant’s YouTube Terms of Service. Using a confusingly similar domain name to enable a violation of terms of service may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per 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). Complainant provides screenshots showing the disputed domain name redirects to a domain name that resolves to a commercial website that enables Internet users to directly violate Complainant’s YouTube Terms of Service. Complainant also provides screenshots showing Respondent’s website features several prominent uses of Complainant’s YouTube logos and the pronoun “we,” thus lending Respondent’s assertions an air of legitimacy. This is evidence that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent fails to use the <youtubetomp3.tech> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent also uses the disputed domain name in connection with pay-per-click advertising for third party products and services unrelated to Complainant. Using a disputed domain name in connection with pay-per-click advertisements unrelated to a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). 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.”); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (‘The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots showing Respondent’s website features pay-per-click advertising. Complainant argues Respondent presumably receives revenue from these advertisements. The Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends Respondent registered and uses the <youtubetomp3.tech> domain name in bad faith as Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s disputed domain name for financial gain. Registering a confusingly similar domain name to attract Internet users for financial gain can demonstrate bad faith per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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)). Complainant argues that given Respondent’s use of YOUTUBE in the disputed domain name and on Respondent’s website, which directly targets Complainant’s YouTube service, Respondent clearly is using the YOUTUBE mark to attract Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites and the services promoted on those websites. Complainant provides screenshots showing Respondent uses the disputed domain name to display pay-per-click advertising for third parties unrelated to Complainant. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends Respondent registered and uses the <youtubetomp3.tech> domain name in bad faith as Respondent uses the disputed domain name to enable users to violate Complainant’s Terms of Service. Using a disputed domain name to enable Internet users to violate a complainant’s terms of service can demonstrate bad faith per 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). Complainant provides screenshots showing Respondent uses the disputed domain name to allow Internet users to violate Complainant’s YouTube Terms of Service. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends Respondent registered the <youtubetomp3.tech> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the YOUTUBE mark prior to registering the disputed domain name based on Respondent’s use of Complainant’s mark. Use of a mark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per 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”). 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 that Respondent had knowledge of the mark and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <youtubetomp3.tech> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
September 1, 2021
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