Google LLC v. Robert Brink / Fayva / J. Fink Ivana
Claim Number: FA2108001959784
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Robert Brink / Fayva / J. Fink Ivana (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtubemp3free.cc> and <youtubemp3free.net> (collectively “Domain Names”) are registered with URL Solutions, Inc. and NameSilo, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2021; the Forum received payment on August 16, 2021.
On August 17, 2021, URL Solutions, Inc. and NameSilo, LLC confirmed by e-mail to the Forum that the <youtubemp3free.cc> and <youtubemp3free.net> domain names are registered with URL Solutions, Inc. and NameSilo, LLC and that Respondent is the current registrant of the names. URL Solutions, Inc. and NameSilo, LLC have verified that Respondent is bound by the URL Solutions, Inc. and NameSilo, LLC registration agreements 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 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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 firstname.lastname@example.org, email@example.com. Also on August 19, 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 September 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which are listed as the registrants of the Domain Names are effectively controlled by the same person and/or entity, which is operating under 2 aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant has provided detailed evidence of the connections between each of the Domain Names and in particular that: 1) the Domain Names are similar variants of Complainant’s YOUTUBE mark, indeed they are identical save the differing top-level domains; and 2) the Domain Names resolve to websites (“Respondent’s Websites”) that are essentially identical, involving the offering of identical services on websites with identical designs on an identical template. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities would register very similar domain names and point them to essentially identical websites operating on an identical business model.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for this decision.
Complainant operates, amongst other things, the YouTube video sharing service at the website <www.youtube.com>, which was created in February 2005. 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 <youtubemp3free.cc> and <youtubemp3free.net> domain names are confusingly similar to Complainant’s YOUTUBE mark as they contain the entire mark and merely add: (i) the non-distinctive, generic term “mp3,” (ii) the non-distinctive and highly descriptive term “free”, and (iii) the “.net” generic top level domain (“gTLD”) or the “.cc” country code top-level domain (“ccTLD”).
Respondent lacks rights or legitimate interests in the <youtubemp3free.cc> and <youtubemp3free.net> domain names. Respondent is not commonly known by the Domain Names nor has Respondent been authorized by Complainant to use the YOUTUBE mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead the Domain Names resolve to the Respondent’s Websites where Respondent enables Internet users to directly violate Complainant’s YouTube Terms of Service by allowing users to download content from Complainant’s YouTube service. Respondent also uses the Domain Names to host advertising for products and services unrelated to Complainant.
Respondent registered and uses the <youtubemp3free.cc> and <youtubemp3free.net> domain names in bad faith. Respondent engages in a pattern of bad faith. Additionally, Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s Websites and then diverts the users to advertising unrelated to Complainant, likely for financial compensation. Respondent also uses the Domain Names 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 Domain Names based on the content of the Respondent’s Websites.
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the YOUTUBE mark. Each of the Domain Names is confusingly similar to Complainant’s YOUTUBE mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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 has rights in the YOUTUBE mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 3,525,803, registered Oct. 28, 2008). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that each of the Domain Names is confusingly similar to the YOUTUBE mark as they each incorporate the entire YOUTUBE mark while adding the generic terms (“mp3” and “free”) and either the “.net” gTLD or the “.cc” ccTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the YOUTUBE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Robert Brink / Fayva / J. Fink Ivana” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names resolve to the Respondent’s Websites which purport to allow users to download (and convert to mp3 format) videos hosted on Complainant’s YouTube site. This action is in breach of Complainant’s terms of service and may facilitate copyright infringement. As part of this service, Respondent displays a number of advertisements on the Respondent’s Websites, for which it likely receives revenue. The use of domain names containing the YOUTUBE Mark to resolve to websites that, for commercial gain, assist and encourage individuals to breach Complainant’s terms of service and facilitate copyright infringement is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii)
The Panel finds on the balance of probabilities that, at the date of registration of the Domain Names (August 30, 2018 and April 30, 2020 respectively), Respondent had actual knowledge of Complainant’s YOUTUBE mark as the Respondent’s Websites directly refer to Complainant’s services. Indeed Respondent’s purported business model relies on the exploitation of Complainant’s YouTube service. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s YOUTUBE Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites allowing downloads from Complainant’s website which is in breach of Complainant’s terms of service and potentially facilitates copyright infringement. Use of a disputed domain name to encourage and assist users in breaching a targeted website’s terms of service may be evidence of bad faith per Policy ¶ 4(a)(iii). See Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1703001721606 (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith); see also 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).
The Panel finds Complainant has satisfied 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 <youtubemp3free.cc> and <youtubemp3free.net> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 14, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page