DECISION

 

Google LLC v. nicolas muckensturm

Claim Number: FA2110001970878

 

PARTIES

Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA.  Respondent is nicolas muckensturm (“Respondent”), France.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mp3-youtube-converter.org>, registered with Ligne Web Services SARL dba LWS.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 27, 2021; the Forum received payment on October 27, 2021.

 

On November 8, 2021, Ligne Web Services SARL dba LWS confirmed by e-mail to the Forum that the <mp3-youtube-converter.org> domain name is registered with Ligne Web Services SARL dba LWS and that Respondent is the current registrant of the name. Ligne Web Services SARL dba LWS has verified that Respondent is bound by the Ligne Web Services SARL dba LWS 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 November 16, 2021, the Forum served the Complaint and all Annexes, including a French and English language Written Notice of the Complaint, setting a deadline of December 6, 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-converter.org.  Also on November 16, 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 December 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Preliminary Issue: Language Of The Proceeding

In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name.  That language is French.  However, Complainant has requested that the language of the proceeding should instead be English.  In support of this request, Complainant submits that:

 

(i)    the disputed domain name wholly contains English words and characters;

(ii)  the content of the website resolving from the domain name is rendered entirely in English; and

(iii) these facts demonstrate Respondent’s proficiency in English.

 

These contentions are not disputed by Respondent.  In view of this, and of the fact that the record discloses that Respondent has communicated with the Forum via an e-mail message which is written in English, together with the fact that there is nothing in the record suggesting that Respondent would be prejudiced by our proceeding in English, as well as that for us to require Complainant to prosecute this proceeding in French would put Complainant to a substantial financial burden and unnecessarily delay this proceeding, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request.  See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language). 

 

Accordingly, this proceeding will be conducted in the English language.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant owns and operates one of the most viewed webpages in the world providing digital content and related services, including a video sharing service marketed under the name and mark YOUTUBE.

 

Complainant holds a registration for the YOUTUBE trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,525,802, registered October 28, 2008, and renewed as of November 6, 2018.

 

Respondent registered the domain name <mp3-youtube-converter.org> on September 29, 2018.

 

The domain name is confusingly similar to Complainant’s YOUTUBE mark.

 

Respondent has not been commonly known by the domain name.

 

Complainant has not authorized Respondent to use the YOUTUBE mark in any way.

 

Respondent fails to make a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it.

 

Instead, Respondent uses the domain name to purport to allow Internet users to download and save content from Complainant’s official website, which would violate Complainant’s terms of service expressly prohibiting downloading and saving content from the YouTube website unless expressly authorized by Complainant, while surreptitiously installing malware onto Internet users’ devices.

 

Respondent lacks both rights to and legitimate interests in the domain name.

 

Respondent knew of Complainant’s rights in the YOUTUBE mark when it registered the domain name.

Respondent both registered and now uses the domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and

 

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

 

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.    Respondent has no rights to or legitimate interests in respect of the domain name; and

iii.   the domain name has been registered and is being used by Respondent in bad faith.

 

In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate.  The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory.  See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true).  But see 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”).

 

Identical and/or Confusingly Similar

Complainant has rights in the YOUTUBE trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO.  See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):

 

Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.

 

This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here France).  See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):

 

[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.

 

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <mp3-youtube-converter.org> domain name is confusingly similar to Complainant’s YOUTUBE trademark and service mark.  The domain name that incorporates the mark in its entirety, merely adding two hyphens and the generic terms “mp3” and “converter,” which together describe a feature of Complainant’s video sharing service, plus the generic Top Level Domain (“gTLD”) “.org.”  These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).

 

Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):

 

[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

This is because every domain name requires a gTLD or other TLD.

 

Finally, Respondent’s inclusion of hyphens in its domain name is of no consequence to our analysis because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result.

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <mp3-youtube-converter.org> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests).  See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):

 

Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy.  Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence).  Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <mp3-youtube-converter.org> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the YOUTUBE mark in any way.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “nicolas muckensturm,” which does not resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii).  See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the domain name to purport to allow Internet users to download and save content from Complainant’s official website, which would violate Complainant’s terms of service expressly prohibiting downloading and saving content from the YouTube website unless expressly authorized by Complainant, while surreptitiously installing malware onto Internet users’ devices.

 

This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.  See, for example, Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempted to download computer viruses to their computers “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).

                                                     

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

We are persuaded by the evidence that Respondent uses the challenged <mp3-youtube-converter.org> domain name to attempt surreptitiously to download malware onto the electronic devices of unsuspecting Internet users.  Such a use is, perforce, proof of registration and use of the domain name in bad faith.  See, for example, eNom, Incorporated v. Muhammad Enoms General, FA1505001621663 (Forum July 2, 2015):

 

… Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is [evidence of] bad faith under Policy ¶ 4(a)(iii).

 

We are also convinced by the evidence that Respondent knew of Complainant, and of its rights in the YOUTUBE mark, at the time it registered the <mp3-youtube-converter.org> domain name.  This further demonstrates Respondent’s bad faith in registering it.  See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):

 

The Panel … here finds actual knowledge [on the part of a respondent of a UDRP complainant’s rights in a mark to which that respondent’s domain name was confusingly similar, and therefore that respondent’s bad faith in registering the domain name] through the name used for the domain and the use made of it.

 

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <mp3-youtube-converter.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  December 21, 2021