Google LLC v. Luiz Pereira Alves
Claim Number: FA2303002035270
Complainant is Google LLC (“Complainant”), represented by Caleb Green of Dickinson Wright PLLC, Michigan, USA. Respondent is Luiz Pereira Alves (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vdyoutube.com>, registered with Internet Domain Service BS Corp.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on March 10, 2023; Forum received payment on March 10, 2023.
On March 14, 2023, Internet Domain Service BS Corp confirmed by e-mail to Forum that the <vdyoutube.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 March 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2023 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@vdyoutube.com. Also on March 21, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 states that the YOUTUBE mark is a coined term that was created by its then-owner YouTube, Inc. in February 2005 for use as the brand of a video sharing service. The <youtube.com> website was launched on April 24, 2005, and the YOUTUBE mark and related logos have been prominently featured since then at the website and otherwise in marketing for the service. The popularity of the <youtube.com> website grew quickly. In July 2006, Nielsen Netratings named <youtube.com> the fastest growing website between January and June 2006. The website ended that period with a monthly unique audience of 19.6 million, and with 724 million web page views. In August 2006, the Wall Street Journal reported that the <youtube.com> website hosted approximately 6.1 million videos and had about 500,000 user accounts. Time magazine hailed YouTube as the best invention of the year in its 2006 edition. In November 2006, Google acquired YouTube, Inc., and in 2007 was assigned the YOUTUBE mark and YouTube, Inc.’s other marks and their associated goodwill In February 2007, Brandchannel announced that the YOUTUBE brand ranked third in its 2006 Reader’s Choice Awards, behind only GOOGLE and APPLE. By November of that year, comScore reported that YouTube users watched 2.9 billion videos and Nielsen Netratings reported that the service had 67.5 million unique users. Since then, YouTube rapidly became the leading online video sharing site that it is today. For 2013, Nielsen Netratings rated YouTube as the fifth “Top U.S. Web Brand” and the number one “U.S. Online Video Brand” with more than 128 million unique viewers. Interbrand recently ranked YouTube as the #30 best global brand. According to Alexa, YouTube is currently the second most viewed website in the world and it ranks in the top ten in numerous countries. Today, YouTube has more than 2 billion monthly logged-in users, and more than 500 hours of content are uploaded to YouTube every minute. There are localized versions of YouTube in more than 100 countries around the world and across 80 languages, making YouTube accessible to more than 95% of the world’s Internet users. Each day, people watch more than a billion hours of video on YouTube and generate billions of views. Complainant’s YouTube service reaches more 18-34 and 18-49 year olds in the U.S. than any television network (broadcast or cable) – and it does that on the YouTube mobile platform alone. Complainant has rights in the YOUTUBE mark through its registration with multiple trademark agencies, including in the United States in 2009.
Complainant alleges that the disputed domain name is identical or confusingly similar to its YOUTUBE mark as it incorporates the mark in its entirety and merely adds the letters “vd”(which can stand for “video download”) and the “.com” generic top-level-domain name ("gTLD").
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the YOUTUBE mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non commercial or fair use. Instead, Respondent uses the disputed domain name to encourage users to violate Complainant’s YouTube Terms of Service. Respondent is also using the disputed domain name to host pay-per-click advertising for financial gain, and to distribute malware
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent’s website disrupts Complainant’s business by enabling users to violate Complainant’s Terms of Service. Respondent registered and uses the disputed domain name to attract users for financial gain by displaying pay-per-click advertising. Respondent is distributing malware from the disputed domain name. Respondent had actual knowledge of Complainant’s rights to the YOUTUBE mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark YOUTUBE and uses it to provide a well-known video sharing service. The mark is famous.
Complainant’s rights in its mark date back to at least 2009.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s mark, refers to Complainant’s service, and purports to enable Internet users to violate Complainant’s You Tube terms of service.
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”).
The disputed domain name incorporates Complainant’s YOU TUBE mark in its entirety and merely adds the letters “vd”(which can stand for “video download”) and the “.com” generic top-level-domain name ("gTLD"). The addition of letters and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ 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 also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its YOUTUBE mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information for the disputed domain name lists the registrant as “Luiz Pereira Alves”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant alleges that the resolving website displays pay-per-click hyperlinks and distributes malware. The evidence presented by Complainant in support of these allegations is minimal. Given that, as discussed below, other elements are dispositive, the Panel will not make findings regarding the above allegations and will not further discuss them.
Respondent uses the disputed domain name to encourage users to download and save content in violation of Complainant’s YouTube Terms of Service. Panels have held that a respondent’s use of a disputed domain name to promote unauthorized activity with a complainant’s services is not bona fide or legitimate. 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 unauthorised 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. Hui Chen / FoxPDF Software Inc / Chen Hui, FA1940677 (Forum May 24, 2021) (no rights or legitimate interests where the respondent used the <youtube-mp3.online> and <onlineyoutube.com> domain names with websites that enabled users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service); see also Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the <10youtube.com> domain name in association 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 Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Google Inc. v David Miller, FA1067791 (Forum Oct. 24, 2007) (finding that respondent’s use of the <youtubex.com> domain name in association with a website that enabled Internet users to download and save video clips from Google’s YouTube service in violation of Google’s YouTube Terms of Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website purports to enable Internet users to violate Complainant’s terms of service. Past panels have found that use of disputed domain name to enable users to violate a complainant’s terms of service is evidence of bad faith use and registration. See Google LLC v. Hui Chen / FoxPDF Software Inc / Chen Hui, FA1940677 (Forum May 24, 2021) (finding bad faith use and registration where the respondent used the <youtube-mp3.online> and <onlineyoutube.com> domain names with websites that enabled users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service); 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); see also Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding use of the <10youtube.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); see also Google Inc. v David Miller, FA1067791 (Forum Oct. 24, 2007) (finding use of the <youtubex.com> domain name in association with a website that enabled download of video clips from Google’s YouTube website in violation of Google’s YouTube Terms of Service to constitute bad faith use and registration under the Policy). Therefore the Panel finds that Respondent registered and uses and registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and refers to Complainant’s services. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this too constitutes bad faith under 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 <vdyoutube.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 18, 2023
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