Google LLC v. Chianugo Peter Chinweuba / Slim-P Entertainment
Claim Number: FA2209002010862
Complainant is Google LLC (Complainant), represented by James R. Davis, II, of Perkins Coie LLP, US. Respondent is Chianugo Peter Chinweuba / Slim-P Entertainment (Respondent”), CA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubeaudio.com>, 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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to Forum electronically on September 5, 2022; Forum received payment on September 5, 2022.
On September 06, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <youtubeaudio.com> 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 September 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2022, 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@youtubeaudio.com. Also on September 9, 2022, 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.
A timely Response was received and determined to be complete on September 14, 2022.
On October 31, 2022, Complainant filed a Reply Brief. Thereafter, Respondent submitted an additional, undated, submission. Respondent’s counsel, in a letter dated November 3, 2022, submitted argument in favor of Respondent.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Google LLC is a global company with offices throughout North America, Europe, Latin America, Asia Pacific, Africa, and the Middle East. The GOOGLE name and company were created in 1998 and the GOOGLE search engine has become one of the most highly recognized Internet search services in the world.
Complainant is the current owner of the YOUTUBE trademark, which was first used in connection with a video sharing service in 2005. The youtube.com website was launched in April 2005 and is currently the second most viewed website in the world. Complainant owns numerous registrations for the YOUTUBE trademark in the United States and globally.
Complainant asserts that the disputed domain name is nearly identical or confusingly similar to its YOUTUBE trademark. It notes that the disputed domain name fully incorporates the YOUTUBE mark, adding only the descriptive word “audio.” Complainant then asserts that the inclusion of a generic top-level domain does not diminish the confusingly similarity with Complainant’s mark.
Respondent’s actions are not a bona fide offering of goods or services, nor is Respondent engaged in a legitimate noncommercial or fair use of the disputed domain name, Complainant asserts. Complainant alleges that “Respondent has offered to sell the domain name and used it with a commercial pay-per-click site, where, upon information and belief, Respondent makes money each time a confused consumer clicks on a link at the site.” According to Complainant, Respondent is currently using the domain name with a website that uses the name YT Audio alongside the GOOGLE trademark to falsely suggest that Google is affiliated with the disputed domain name and commercial content on the site.
With respect to the issue of “bad faith” registration and use, Complainant maintains that the fame and distinctive qualities of the YOUTUBE trademark “render it wholly implausible” that Respondent independently and innocently registered the disputed domain name, which combines the YOUTUBE mark with the descriptive word “audio,” a word that would be commonly associated with the YouTube videos and related services.
Complainant contends that Respondent’s bad faith in further demonstrated by its offer to sell the disputed domain name via a link on the pay-per-click (PPC) website, as well as by its use of a privacy service to conceal its true identity and contact information.
B. Respondent
Respondent explains that Youtube Audio, also known as YT Audio, is based in Nigeria and is a “creative mobile application that encourages uses to be more creative and enjoy utilizing audio as a primary source of entertainment, information, and expression.”
Respondent indicates that the business name “Youtube Audio” is duly registered with the Corporate Affairs Commission of Nigeria and that the Youtube Audio logo is a trademark of Youtube Audio, which has paid and registered it under the commercial law department of Nigeria. Youtube Audio has local investors, including Respondent Chianugo Peter Chinweuba.
Respondent registered the disputed domain name in 2014. He asserts that he contacted Google in 2014 to introduce his idea for “only Audio Application for Youtube” but was ignored. He then indicates that he built Youtube.Audio as an audio only streaming platform before Google launched YouTube music in 2015. Respondent again reached out to Google in 2021 after he added a social media concept on the disputed website but was ignored again.
Respondent notes that he has added a number of features to his website, none of which are within the scope of Google’s business. Among such features is Split Music, commonly known as voiceover instrumental, as well as Bookworm, which allows the user to convert any book into an audio book.
Respondent’s website was launched in 2021 with PPC advertising and in-app purchases as a means of income.
Respondent explains that, on April 29, 2022, Google’s Nigerian counsel contacted Respondent requesting him to change his company name and domain name. On May 12, 2022, Respondent’s counsel responded to Google’s counsel’s letter indicating that Respondent intended to resolve the matter amicably provided Google would fully compensate Respondent for expenses incurred in making the requested changes.
Respondent contends that his use of YouTube in his domain name and associated websites would not lead anyone to imply that Youtube Audio is associated with Google. While Youtube.com and YoutubeAudio.com are similar, Respondent concedes, they are “not the same.” Moreover, Respondent asserts, the products offered by the parties are not the same. Google, Respondent notes, does not offer features such as Music Split and Bookworm.
With respect to Respondent’s financial benefit, Respondent explains that he “has never operated from a stand point of personal gain or profit. From our mission and vison [sic] statement … it is clear that YTAUDIO aims to use its profit to help the poor, mostly Africans as there is a high level of poverty in the continent and not to loot the public.”
Focusing on the issue of rights or legitimate interests, Respondent highlights that he did not use the name Youtube but YoutubeAudio, which he registered with the Nigerian government.
On the issue of “bad faith” registration and use, Respondent notes that, contrary to any assertion by Complainant, there is no website called YT Audio that makes prominent use of the Google name and trademark. YT Audio, Respondent explains, is the name of the app on Google playstore and not a website. Respondent explains that, in 2015, Go Daddy LLC, without Respondent’s consent, put the disputed domain name up for sale. “I admit that I had listed the domain to be sold after buying it but I changed my mind to build on it in 2014/15; perhaps maybe because of my intent to sell it that made Godaddy LLC to advertise the pay per click which I was not paid for.”
In conclusion, Respondent reiterates that he is willing to give up and hand over the disputed domain name, as well as his business name, social media pages, and trading style, if Google would bear the costs for the requested changes.
C. Additional Submissions
Complainant, in its Reply Brief, asserts that Respondent conceded that he registered the disputed domain name with actual knowledge of the YOUTUBE mark and did so for a commercial purpose when he admitted that, before he registered the dispute domain name in 2014, he contacted YouTube to make a proposal regarding “only Audio Application for YouTube.” This “supports Google’s allegations that Respondent registered and is using the infringing domain name … in bad faith and in violation of the UDRP.”
Complainant further argues that the trademark filings referred to in the Response are irrelevant to this UDRP proceeding insofar as they are dated in 2020 and pertain to a Y logo.
Attached to Complainant’s Reply Brief is a letter from Respondent to Google, dated August 6, 2022, where Respondent admits that he wants “to go into business with” Google and, in the alternative, requests Google for financial support. According to Complainant, “[t]his pattern of activity demonstrates that all of Respondent’s actions, starting with registration of `YouTubeAudio.com’,
are part of a bad faith and knowing scheme to profit off the goodwill Google has created in the YOUTUBE brand and to extort a business relationship or compensation from Google.”
Complainant also takes issue with Respondent’s assertion that YouTube is not used for music services and submitted a screenshot showing such assertion to be false.
Respondent, in his Additional Submission, stated as follows:
“I am aware of YouTube streaming services, however, when I wrote to Google in 2014, there was no intent to be in business with them until 2022 after I was contacted months ago by Google about my company YoutubeAudio, it was after I was contacted in 2022 the thought of possible partnership relationship grew. In 2014, when I got no response from Google, I created a prototype of my company and further then made it a dream come through in 2015; I also upgraded my services in 2021. I was only a dreamer with possibilities and just because Google did not respond to me in 2014, does not mean I should shut off my inspiration.
“When
I invested in purchasing the domain from a third party which was not GoDaddy
Inc., it was not to build on the name, I was only investing on a domain that
appeared to be great, today the domain is worth over $3,000 which is over 1000%
profit from the initial cost. I had the domain since 2014 and since then
inspirations of what to use it for always disturbed me. Then I
decided to contact Google and share ideas, when I got
no response, I followed my dream, with understanding that I had a domain that
looked like YouTube but is not YouTube and does not operate with the same
services, I returned to Nigeria, registered the business and invested close to
$50,000 literally all that I had to build on my Application Programming
Interface. YoutubeAudio would never have been the name from the beginning, it
unfortunately was so
because I had a domain already having such a name
that inspired my dream and vision and on attempting to register the company, I
was successful, both in Federal Law and Trademarks.
[***]
“I had
and have no intentions to extort Google, in fact, I have always admired the
company and on my own part doing whatever I can to help the company grow, this
was my intent for contacting them in 2014, I felt Google needed to
own a social media music platform and this is what my
company is doing today and Google LLC is not doing that; YTAUDIO operations are
OBVIOUSLY VERY different in all ramifications[.]”
Respondent’s Nigerian counsel, in a letter dated November 3, 2022, points out that Respondent’s logo is a trademark that is registered with the Federal Ministry of Trade and Investment and contends that the core features of Youtube Audio are distinct from YouTube video and audio streaming services.
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.
The Panel concludes that the disputed domain name youtubeaudio.com is confusingly similar to the YOUTUBE trademark. As Complainant notes, the disputed domain name incorporates the mark in full, adding only descriptive (“audio”) or generic (“.com”) matter.
Under paragraph 4(a)(i) of the Policy, fully incorporating a mark in its entirety and adding a descriptive term fails to sufficiently distinguish a domain name from a registered mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”).
While Respondent alleges that the parties’ services are different, such fact, even if true (which the evidence indicates is not the case), would not defeat a finding of confusing similarity under this element of the Policy. The test for confusing similarity typically involves merely a side-by-side comparison of the domain name and the textual elements of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See WIPO Jurisprudential Overview 3.0, §1.7. That is clearly the case here.
The Panel further finds that Complainant has rights in the YOUTUBE trademark. The evidence indicates that Complainant owns U.S. Trademark Registration Nos. 3711233 and 3525802 for the YOUTUBE trademark.
The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
There is no evidence that Respondent is licensed or otherwise authorized to use the YOUTUBE trademark; in fact, all efforts by Respondent to enter into some type of commercial relationship with Complainant, were rebuffed. There is also no evidence that the disputed domain name corresponds to Respondent’s actual given name, stage name, nickname, or other observed moniker. The fact that the Corporate Affairs Commission of the Federal Republic of Nigeria has issued a Certificate of Registration for YOUTUBE AUDIO as a business name does not support a determination that Respondent, himself, or Respondent Slim-P Entertainment, is commonly known by the disputed domain name.
Respondent cites his Nigerian trademark registration in support of the claim that he has rights or legitimate interests in the disputed domain name. However, while a respondent’s registration of a trademark corresponding to a domain name may generate rights or legitimate interests (see WIPO Jurisprudential Overview 3.0, §2.12), Exhibit A to the Response indicates that Respondent’s trademark registration is for a stylized version of the letter “Y” and not for YOUTUBE AUDIO.
The Panel finds that the disputed domain name is not being used in connection with a bona fide offering of goods or services. Exhibit F to the Complaint includes screen shots from Respondent’s youtubeaudio.com website. One screen shot, apparently taken on September 1, 2022, includes reference to Complainant Google and includes the following statement: “Unleashing the Best Audio App with amazing features – Officially Launching YT Audio.” The other screen shot, apparently taken on August 6, 2015, includes several PPC related links to music and movie sites.
There is also no evidence that the Respondent is using the disputed domain name for a noncommercial or fair use. While Respondent indicates that he has never operated from a standpoint of personal gain or profit, such fact does not detract from the commercial nature of his venture.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
The evidence indicates that the YOUTUBE trademark was first used in February 2005 in connection with a video sharing service. This is well prior to Respondent’s 2014 registration of the disputed domain name. While Respondent is apparently located in Nigeria, Respondent’s emails to Complainant clearly establish that Respondent knew that Complainant owns the well-known YOUTUBE trademark and wanted to enter into some type of business relationship with Complainant.
Further, as noted above, the disputed domain name is confusingly similar to the YOUTUBE mark. And, while Respondent argues that the parties’ services are different, the evidence indicates that both parties’ services, as advertised on their respective websites, include music.
Based on the above, the Panel finds that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of such site or of a product of service on such site, within the meaning of paragraph 4(b)(iv) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubeaudio.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: November 21, 2022
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