Google LLC v. dcyoutube / david stonehill
Claim Number: FA1902001828331
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is dcyoutube / david stonehill (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dcyoutube.net>, registered with NameSilo, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2019; the Forum received payment on February 4, 2019.
On February 4, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <dcyoutube.net> 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 February 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2019 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@dcyoutube.net. Also on February 8, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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
1. Complainant’s YOUTUBE mark identifies Complainant’s award-winning and unique digital content distribution service. Complainant engages in business in 88 countries around the world across 76 languages, covering 95% of all Internet traffic. Complainant has rights in the YOUTUBE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,525,802, registered Oct. 28, 2008).
2. Respondent’s <dcyoutube.net>[i] domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic, non-distinct letters “dc” and the “.net” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <dcyoutube.net> domain name. Respondent is not commonly known by the domain name despite registering the domain name under the organization purportedly called “dcyoutube,” nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the YOUTUBE mark.
4. Respondent also does not use the domain name in connection with a 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 own <youtube.com> website. Further, Respondent invites third-party advertisements to display their material on the website, presumably to benefit from pay-per-click fees generated when users select the links.
5. Respondent registered and uses the <dcyoutube.net> domain name in bad faith. Respondent has been found to have registered domain names in bad faith before, specifically regarding Complainant’s YOUTUBE mark. Further, Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing and commercial website, thereby disrupting Complainant’s business.
6. Additionally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark prior to registering the domain name given the extensive use, media coverage and fame of Complainant’s YOUTUBE mark and Complainant’s worldwide trademark filings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the YOUTUBE mark. Respondent’s domain name is confusingly similar to Complainant’s YOUTUBE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <dcyoutube.net> domain name and that Respondent registered and uses the domain name 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the YOUTUBE mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,525,802, registered Oct. 28, 2008). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Accordingly, the Panel holds that Complainant has established rights in the YOUTUBE mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <dcyoutube.net> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic, non-distinct letters “dc” and the “.net” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See 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.”). The Panel therefore finds that the <dcyoutube.net> domain name is confusingly similar to the YOUTUBE mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <dcyoutube.net> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the <dcyoutube.net> domain name nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the YOUTUBE mark. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). The WHOIS identifies “dcyoutube / david stonehill” as the registrant. Complainant further asserts, without contradiction, that it has never authorized Respondent to use the YOUTUBE mark in any way Accordingly, Respondent is not commonly known by the <dcyoutube.net> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the <dcyoutube.net> domain name in connection with a website that purports to enable Internet users to download and save content from Complainant’s own <youtube.com> website, while inviting third-party advertisements to display their material on the website. Using a domain name incorporating the mark of another to offer that party’s own services and/or generic links to third-party services generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”). Complainant provides a screenshot of the resolving webpage associated with the <dcyoutube.net> domain name, which displays the title “Youtube Video Downloader,” purporting to allow users to download media content, and soliciting users to display advertising content on the website. Thus, the Panel agrees that Respondent’s use of the <dcyoutube.net> domain name fails to amount to any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has provided evidence that Respondent has been found to have registered domain names in bad faith before, specifically in regard to Complainant’s YOUTUBE mark. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evidence bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides the Panel with the case citation, Google LLC v. david stonehill, FA1808821, which the Panel did order the transfer of the domain name in that case. Accordingly, the Panel holds that Respondent registered the <dcyoutube.net> domain name in bad faith based on Respondent’s prior history of registering confusingly similar domain names.
Complainant claims that Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing and commercial website, thereby disrupting Complainant’s business. Such use shows bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”). Complainant has provided a screenshot of the resolving webpage associated with the domain name, which displays the title “Youtube Video Downloader,” and purports to allow users to download media content, and solicits users to display advertising content on the website. The Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark at the time of registering the <dcyoutube.net> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can show bad faith under Policy ¶ 4(a)(iii). See 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). Complainant contends that Respondent’s knowledge can be presumed given the extensive use, media coverage and fame of Complainant’s YOUTUBE mark, Complainant’s worldwide trademark filings, Respondent’s registration of a domain name that wholly incorporates the YOUTUBE mark, and Respondent’s direct references to Complainant’s services on the resolving website. The Panel agrees and holds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <dcyoutube.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 6, 2019
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