Google LLC v. Luke Capps
Claim Number: FA2306002048943
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Luke Capps (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubetomp3.world>, (‘the Domain Name’) registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on June 14, 2023; Forum received payment on June 14, 2023.
On June 14, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <youtubetomp3.world> Domain Name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 June 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@youtubetomp3.world. Also on June 14, 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 July 11, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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
The Complainant is the owner of the mark YOUTUBE, registered, inter alia in the USA for video sharing services with first use recorded in the USA as 2005.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s trade mark, adding only generic terms ‘to’ and ‘mp3’, and the gTLD .world which do not prevent said confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name is being used for a website that encourages and claims to enable Internet users to download and save content from Complainant’s YOUTUBE website. When Complainant’s Counsel attempted to test Respondent’s service by entering a URL, Respondent’s website redirected Complainant’s counsel to a page offering malware. The service offered by Respondent at the resolving website encourages users to violate, Complainant’s YOUTUBE Terms of Service. Specifically, YOUTUBE’s Terms of Service expressly prohibits (i) the downloading and saving of content from the YOUTUBE website unless expressly authorized by Complainant, and (ii) 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 on the YOUTUBE site. The site directs to a separate site offering youtube conversion to mp3 services and also bears pay per click advertisements.
Respondent’s use of the Domain Name is not a bona fide offering of services or legitimate noncommercial or fair use. It is registration and use in opportunistic bad faith diverting Internet users for commercial gain and disrupting the Complainant’s business. Use for pay per click links and malware are each on their own bad faith registration and use per se.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark YOUTUBE, registered, inter alia in the USA for video sharing services with first use recorded in the USA as 2005.
The Domain Name registered in 2019 is being used for a website that encourages and claims to enable Internet users to download and save content from Complainant’s YOUTUBE website. Respondent’s website distributes malware, bears pay per click advertisements, and directs to a separate site offering youtube conversion to mp3 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.
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 Domain Name in this Complaint combine the Complainant’s YOUTUBE mark (registered, inter alia, in the USA for video sharing services with first use in commerce in USA recorded as 2005), the generic terms ‘to’ and ‘mp3’ and the gTLD ‘.world’.
The addition of the generic terms ‘to’ and ‘mp3’ do not prevent confusing similarity between the Domain Name and the Complainant’s YOUTUBE mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i)).
The gTLD ‘.world’ does not serve to distinguish the Domain Name from the YOUTUBE mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purposes of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).The use is commercial so cannot be legitimate noncommercial or fair use.
The Respondent has used the site attached to the Domain Name to point to competing services without making it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
The web site attached to the Domain Name also points to commercial pay per click links. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Vance Int’l Inc v Abend, FA 0970871 (Forum June 8, 2007) (Concluding that the operation of a pay per click web site at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate non commercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially benefitting from the click through fees.).
Further the site attached to the Domain Name encourages users to breach the Complainant’s terms and conditions. See Google LLC v. Cang hua / Canghua, FA 1921973 (Forum Dec. 28, 2020) (“Encouraging Internet users to violate a complainant’s terms of service does not amount to a bona fide offer of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The site attached to the Domain Name is also being used to offer suspected malware which is also not a bona fide offering of goods or services or a legitimate non commercial or fair use. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”).
The Respondent has not answered this Complaint and has not rebutted the prima face case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the site attached to the Domain Name is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing services and pay per click links under a domain name containing the Complainant’s mark. The reference to the Complainant’s services in the competing site to which the Respondent’s site points shows that the Respondent is aware of the Complainant’s rights, business and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
Respondent also encourages users to violate the YOUTUBE Terms of Service. Under similar circumstances, previous Panels have found that providing a service that allows users to violate a complainant’s terms of service constitutes bad faith under Policy ¶ 4(b)(iii). See Google LLC v. Nafiz / NZNBD FA 1922009 (Forum Dec. 28, 2020) (“offering of such service is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the domain name per Policy ¶ 4(b)(iii)”).
Offering malware via a domain name containing a complainant’s mark is also bad faith under the Policy. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Policy paragraphs 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubetomp3.world> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 11, 2023
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