Google LLC v. Selmi Nabil
Claim Number: FA2109001966485
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Selmi Nabil (“Respondent”), Tunisia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mp3-youtube.download> and <youtube-mp4.download>, registered with OVH sas.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2021. The Forum received payment on September 27, 2021. The Complaint was received in English.
On September 28, 2021, OVH sas confirmed by e-mail to the Forum that the <mp3-youtube.download> and <youtube-mp4.download> domain names are registered with OVH sas and that Respondent is the current registrant of the names. OVH sas has verified that Respondent is bound by the OVH sas registration agreement, which is in French, 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 October 4, 2021, the Forum served the English language Complaint and all Annexes, including a French and English language Written Notice of the Complaint, setting a deadline of October 25, 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@mp3-youtube.download and postmaster@youtube-mp4.download. Also on October 4, 2021, the French and English language 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 November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L, Limbury 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.
Preliminary Issue: Language of Proceeding
As mentioned, the OVH sas registration agreement is in French. Pursuant to Rule 11(a), the language of the proceeding shall be French, unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English, noting that the <mp3-youtube.download> and <youtube-mp4.download> domain names are in English and resolve to English language websites which prompt users to input English language URLs into the websites. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and French language Written Notice of the Complaint and that the proceedings may be conducted in English.
A. Complainant
Complainant, Google LLC, operates a video sharing service under the famous YOUTUBE brand. Complainant has rights in the YOUTUBE mark based on many registrations of the mark, including with the United States Patent and Trademark Office (“USPTO”). Respondent’s <mp3-youtube.download> and <youtube-mp4.download> domain names are confusingly similar to Complainant’s YOUTUBE mark.
Respondent has no rights or legitimate interests in the <mp3-youtube.download> and <youtube-mp4.download> domain names. Respondent is not commonly known by the domain names and Complainant has not authorized Respondent to use the YOUTUBE mark. Respondent does not use the domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses them to divert Internet users for commercial gain. Furthermore, Respondent uses the domain names to allow users to violate Complainant’s YouTube Terms of Service, which expressly prohibit the downloading and saving of content from the YouTube website unless expressly authorized by Complainant, and the circumventing (or attempted circumventing) of any part of the YouTube Service including features that prevent or restrict the copying or other use of content.
Respondent registered the <mp3-youtube.download> and <youtube-mp4.download> domain names in bad faith with actual knowledge of Complainant’s rights in the YOUTUBE mark and uses them in bad faith to attract Internet users for commercial gain and to encourage them to violate Complainant’s YouTube Terms of Service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the YOUTUBE mark based on numerous registrations of the mark around the world, including with the USPTO (e.g., Reg. No. 3,525,802, registered Oct. 28, 2008). The Panel finds Respondent’s <mp3-youtube.download> and <youtube-mp4.download> domain names to be confusingly similar to Complainant’s YOUTUBE mark as they incorporate the entire mark and simply add the generic terms “mp3” and “mp4”, which do nothing to distinguish the domain names from the mark, along with the “.download” generic top level domain (“gTLD”) which, if not ignored, as is usual in relation to gTLDs, serves to reinforce the distinctiveness of Complainant’s mark.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <mp3-youtube.download> and <youtube-mp4.download> domain names were registered on July 7, 2017 and July 19, 2016 respectively, both many years after Complainant has shown that its YOUTUBE mark had become famous worldwide. They resolve to websites which prominently display the YOUTUBE mark and promote the downloading and conversion of YouTube videos to either mp3 or mp4 format.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <mp3-youtube.download> and <youtube-mp4.download> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or locations or of a product or service on its websites or locations.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous YOU TUBE mark when Respondent registered the <mp3-youtube.download> and <youtube-mp4.download> domain names and that, as found in Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018), Respondent’s use of the <mp3-youtube.download> and <youtube-mp4.download> domain names in association with websites that enable download of content from Complainant’s YouTube website in violation of Complainant’s YouTube Terms of Service constitutes bad faith registration and use under the Policy.
Further, the Panel is satisfied that Respondent has intentionally attempted to attract Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the services promoted on those websites. Respondent has not contested Complainant’s assertion that this has been done for commercial gain. Accordingly, the Panel finds Respondent’s conduct constitutes registration and use of the domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
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 <mp3-youtube.download> and <youtube-mp4.download> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: November 2, 2021
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