Complainant is Google LLC, United States of America (“United States”), represented by Dickinson Wright, PLLC, United States.
Respondent is Global Domain Privacy Services Inc, Panama / Ken Nguyen, Viet Nam.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 29, 2020. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 20, 2021. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 25, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is a company organized under the laws of the United States and a worldwide well-known developer of software and hardware that owns, inter alia, the famous video sharing platform “YouTube”. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its “YouTube” business, inter alia, the following: - Word mark YOUTUBE, United States Patent and Trademark Office, registration number: 3525802, registration date: October 28, 2008, status: active; - Word/device mark YOUTUBE, Panama Industrial Property Registry, registration number: 218469, registration date: November 14, 2012, status: active. Moreover, Complainant evidently owns the domain name According to the disclosed WhoIs information for the disputed domain name, Respodent is a resident of Viet Nam and the disputed domain name was created on October 4, 2018. As evidenced in the Complaint, the disputed domain name resolved to a website promoting to allow – in contrast to Complainant’s Terms of Service – the conversion and downloading of videos and audios from the “YouTube” platform, and also displaying pay-per-click advertisements unrelated to Complainant. At the time of rendering this decision, the disputed domain name redirects to a domain name Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that its YOUTUBE trademark is a coined term created back in February 2005 by its then-owner, which nowadays ranks among the most well-known global brands. Complainant submits that the disputed domain name is confusingly similar to Complainant’s YOUTUBE trademark as it entirely incorporates the latter, merely adding the non-distinctive term “converter” and the country-code Top-Level Domain (“ccTLD”) “.io”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not authorized Respondent to use its YOUTUBE trademark or to register any domain names relating thereto, (2) Respondent uses the disputed domain name to resolve to a website that encourages and claims to enable Internet users to download YouTube videos and audios, thus directly violating Complainant’s Terms of Service, and (3) Respondent uses the disputed domain name to resolve to a website that features pay-per-click advertising unrelated to Complainant and from which Respondent presumably reaps pecuniary reward. Finally, Complainant argues that Respondent registered or is using the disputed domain name in bad faith since (1) given the worldwide fame of Complainant’s YOUTUBE trademark and the way in which it is used in the disputed domain name as well as throughout Respondent’s website, it is inconceivable that Respondent registered the disputed domain name independently and without knowledge of this famous trademark, (2) the website under the disputed domain name purports to enable Internet users to violate Complainant’s terms of service, and (3) the website under the disputed domain name presents Internet users with pay-per-click advertising unrelated to Complainant for which Respondent presumably reaps financial reward. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered or is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the YOUTUBE trademark in which Complainant has rights. The disputed domain name incorporates the predominant word element of the YOUTUBE trademark in its entirety. Numerous panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696)2 . Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive term “converter” does not at all dispel the confusing similarity arising from the incorporation of Complainant’s YOUTUBE trademark in the disputed domain name. Finally, panels widely agree (see WIPO Overview 3.0, section 1.11) that the applicable TLD in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test. Therefore, the existence of the ccTLD “.io” is not in contrast to find that the disputed domain name is confusingly similar to Complainant’s YOUTUBE trademark. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its YOUTUBE trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name, and Respondent does not appear to have any trademark rights associated with the coined term “YouTube” on its own. Finally, as evidenced in the Complaint, the disputed domain name resolved to a commercially active website promoting to allow to convert and download videos and audios from the “YouTube” platform – which obviously is in contrast to, and thus violating, Complainant’s Terms of Service – and also displaying pay-per-click advertisements, presumably at Respondent’s financial advantage. Though now redirecting to another domain name, the content and promoted use of the website is identical to that evidenced by the Complainant. Such use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden. The Panel, therefore, finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered or Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith, though the Policy only requires either use or registration in bad faith be proved. The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s business and its rights in the YOUTUBE trademark (notwithstanding its claimed worldwide fame) when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, using the disputed domain name to run a website offering services that allow Internet users to convert and download videos and audios from the “YouTube” platform – which Complainant’s Terms of Service do not permit – and at the same time presenting Internet users with pay-per-click advertising unrelated to Complainant for which Respondent obviously reaps financial reward, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s YOUTUBE trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In this context, the Panel has also noted that Respondent not only made use of a WhoIs privacy service, apparently in order to conceal its true identity, but also provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice of the Notification of Complaint dated December 30, 2020, could not be delivered. These facts at least throw a light on Respondent’s behavior, which supports the Panel’s bad faith finding. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Stephanie G. Hartung 1 It is evident from the case file that Global Domain Privacy Services Inc, Panama, is a privacy protection service and that Ken Nguyen, Viet Nam, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only. 2 Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.
Sole Panelist
Date: February 4, 2021
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