DECISION

 

Google LLC v. Adrian Coroama

Claim Number: FA2311002070233

 

PARTIES

Complainant is Google LLC ("Complainant"), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Adrian Coroama ("Respondent"), Romania.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <youtubemp3.ro>, registered with ICI.

 

PANEL

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 8, 2023. Forum received payment on November 8, 2023.

 

On November 9, 2023, ICI confirmed by e-mail to Forum that the <youtubemp3.ro> domain name is registered with ICI and that Respondent is the current registrant of the name. ICI has verified that Respondent is bound by the ICI registration agreement, which is in Romanian, 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 10, 2023, Forum served the Complaint and all Annexes, including a Romanian and English Written Notice of the Complaint, setting a deadline of December 1, 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@youtubemp3.ro. Also on November 10, 2023, the Romanian and English 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.

 

On November, 22, 2023 Forum received an informal email from Respondent.

 

On December 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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 formal response from Respondent.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

As noted, the ICI registration agreement is in Romanian. Pursuant to Rule 11(a), the language of the proceeding in relation to the <youtubemp3.ro> domain name shall be Romanian unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.

Complainant requests that the proceeding be conducted in English, noting that the <youtubemp3.ro> domain name is in English and resolves to an English language website. The Panel notes that Respondent communicated with Forum informally in English. These circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.

 

Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Romanian and English language Written Notice of the Complaint and, absent a formal Response, determines that the remainder of the proceedings may be conducted in English.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Google LLC, provides a video sharing service under the YOUTUBE word and related logo marks.

 

Complainant has rights in the YOUTUBE mark through numerous trademark registrations, including with the United States Patent and Trademark Office ("USPTO"). Respondent's <youtubemp3.ro> domain name is confusingly similar to Complainant's YOUTUBE mark.

 

Respondent lacks rights or legitimate interests in the <youtubemp3.ro> domain name since Respondent is not licensed or authorized to use Complainant's YOUTUBE mark and there is no evidence to suggest that Respondent is commonly known by that name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name in connection with a website that purports to enable Internet users to download and save content from Complainant's YouTube service. Respondent thus encourages and claims to enable Internet users to directly violate Complainant's YouTube Terms of Service, which expressly prohibit the unauthorized downloading and saving of content from the YouTube website and providing means to circumvent features of the YouTube Service. Moreover, Respondent uses the Domain Name to redirect Internet users to a website that features advertising unrelated to Complainant and from which Respondent presumably reaps pecuniary rewards.

 

Respondent registered the <youtubemp3.ro> domain name in bad faith with actual knowledge of Complainant's rights in the YOUTUBE mark and uses it in bad faith to attract Internet users to Respondent's online location by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website and the services promoted on that website. Respondent's bad faith is further evidenced by its use of the domain name to enable Internet users to violate Complainant's YouTube Terms of Service and to redirect users to a website featuring advertising unrelated to Complainant through which Respondent presumably reaps pecuniary reward.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 formal 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").

 

Identical and/or Confusingly Similar

 

Complainant has shown that it has rights in the YOUTUBE mark through numerous registrations, including with the USPTO (e.g., Reg. No. 3,711,233, registered on November 17, 2009) and in Romania (logo mark, Reg. No. 091484, registered on May 12, 2008). The Panel finds Respondent's <youtubemp3.ro> domain name to be confusingly similar to Complainant's mark, only differing by the addition of "mp3" (a reference to a computer file format), which does nothing to distinguish the domain name from the mark, and the inconsequential ".ro" country code top-level domain ("ccTLD"), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

 

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <youtubemp3.ro> domain name was registered on October 20, 2015, many years after Complainant has shown that its YOUTUBE mark had become famous worldwide. It resolves to a website headed "Download Mp3 from YouTube" and "Search by words or paste YouTube URL". It redirects Internet users to a website at "www.publiro.com", which features numerous advertisements.

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <youtubemp3.ro> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

 

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:

(iv)        by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's famous YOUTUBE mark when Respondent registered the <youtubemp3.ro> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source of Respondent's website and of the goods promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).

 

Complainant has established this element.

 

Accordingly, it is Ordered that the <youtubemp3.ro> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Alan L. Limbury, Panelist

Dated: December 4, 2023.