Google LLC v. Host Master / 1337 Services LLC
Claim Number: FA2302002032818
Complainant is Google LLC ("Complainant"), United States, represented by Paxton D. Endres of Dickinson Wright PLLC, United States. Respondent is Host Master / 1337 Services LLC ("Respondent"), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <listentoyoutube.online>, registered with Tucows Domains Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on February 21, 2023; Forum received payment on February 21, 2023.
On February 21, 2023, Tucows Domains Inc. confirmed by email to Forum that the <listentoyoutube.online> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 February 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@listentoyoutube.online. Also on February 27, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
Complainant (together with a predecessor in interest) has delivered digital content and provided related services under the YOUTUBE mark since 2005. YouTube rapidly became the leading online video sharing site, and now has more than 2 billion monthly logged-in users and localized versions in more than 100 countries. Complainant owns longstanding trademark registrations for YOUTUBE in the United States and other jurisdictions worldwide. Complainant claims that the mark is famous around the world, citing a previous decision under the Policy recognizing it as such. See Google Inc. v. Alex Dori, FA 1623672 (Forum July 13, 2015).
The disputed domain name <listentoyoutube.online> was registered in March 2018. It is being used for a "ListenToYouTube" website that prominently and repeatedly displays Complainant's YOUTUBE mark in what Complainant describes as "a brand-like manner." The website prompts the user to enter the link for a YouTube video and then provides a link to a downloadable file. Complainant states that Respondent's website violates or encourages users to violate Complainant's YouTube Terms of Service, which prohibit users from downloading content from YouTube without authorization and from attempting to circumvent features that restrict the copying of YouTube content. The website also contains pay-per-click advertisements and redirects users to another website that, Complainant alleges, attempts to install malware on the user's computer. Complainant states that Respondent is not commonly known by the disputed domain name; is not authorized by, endorsed by, or otherwise associated with Complainant; and is not authorized to use Complainant's YOUTUBE mark.
Complainant contends on the above grounds that the disputed domain name <listentoyoutube.online> is confusingly similar to its YOUTUBE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <listentoyoutube.online> incorporates Complainant's registered YOUTUBE trademark, adding the generic terms "listen" and "to" and the ".online" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Google LLC v. Hui Chen / FoxPDF Software Inc / Chen Hui, FA 1940677 (Forum May 24, 2021) (finding <youtube-mp3.online> confusingly similar to YOUTUBE); Google LLC v. Domain Manager, FA 1755084 (Forum Jan. 18, 2018) (finding <listentoyoutube.com> confusingly similar to YOUTUBE). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a misleading website that displays pay-per-click advertisements, redirects users to a malware site, and violates or encourages users to violate Complainant's Terms of Service. For the reasons set forth in Google LLC v. Wu Di, FA 1943822 (Forum June 1, 2021) (ordering transfer of <youtubemusicdownloader.com>), the Panel considers it extremely unlikely that Respondent's use of Complainant mark would qualify as a nominative fair use. See also Google LLC v. Domain Manager, FA 1755084, supra (rejecting similar arguments with respect to <listentoyoutube.com>).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that incorporates Complainant's mark and is using it for a misleading website that displays pay-per-click advertisements, redirects users to a malware site, and violates or encourages users to violate Complainant's Terms of Service. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Google LLC v. Wu Di, FA 1943822, supra (finding bad faith registration and use in similar circumstances); Google LLC v. Domain Manager, FA 1755084, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <listentoyoutube.online> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 28, 2023
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