Google LLC v. Nir Schwartz
Claim Number: FA2012001923457
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Nir Schwartz (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubebyclick.com>, registered with GoDaddy.com, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2020. The Forum received payment on December 1, 2020.
On December 2, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <youtubebyclick.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 December 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2020 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@youtubebyclick.com. Also on December 7, 2020, 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 December 31, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Complainant owns and operates an online video sharing service under the world-famous trademark YOUTUBE, in which it has rights through numerous registrations in many countries, including Israel and the United States. Respondent’s <youtubebyclick.com> domain name is confusingly similar to Complainant’s YOUTUBE mark.
Respondent has no rights or legitimate interests in the <youtubebyclick.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in relation to the YOUTUBE mark. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to a webpage offering Respondent’s own software designed to enable Internet users to download and save content from Complainant’s YouTube website, in violation of Complainant’s YouTube Terms of Service.
Respondent registered and uses the <youtubebyclick.com> domain name in bad faith. Respondent registered the domain name with actual knowledge of Complainant’s rights in the YOUTUBE mark in order to disrupt Complainant’s business and divert customers for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the YOUTUBE mark through its registration of the mark in numerous countries, including in the United States with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,525,802 registered Oct. 28, 2008) and in Israel, where Respondent is located (e.g. Reg. No. 208004, registered on February 11, 2009).
The Panel finds that Respondent’s <youtubebyclick.com> domain name is confusingly similar to Complainant’s YOUTUBE mark because it wholly incorporates the mark and merely adds the words “by” and “click” and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of Policy ¶ 4(a)(ii), 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 <youtubebyclick.com> domain name was registered on June 2, 2011, many years after Complainant’s YOUTUBE mark had become famous. There is no evidence under Policy ¶ 4(c)(ii) that Respondent has been commonly known by the domain name.
The domain name resolves to a website promoting the purchase of software to enable Internet users to download and save content from Complainant’s YOUTUBE site, contrary to Complainant’s terms of use.
Such use of the <youtubebyclick.com> domain name has been found not to give rise to rights or legitimate interests in a domain name. See Google LLC v. Fayva / J. Fink Ivana / Mark Kei / Home, FA1921798, (Forum Dec. 31, 2020) citing 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).”).
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the <youtubebyclick.com> domain name under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show he does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <youtubebyclick.com> domain name under Policy ¶ 4(a)(ii).
Complainant has established this element.
(iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
It is clear from the circumstances described above in relation to the second element that Respondent was well aware of Complainant’s famous YOUTUBE mark when registering the <youtubebyclick.com> domain name and did so intentionally to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the affiliation or endorsement of Respondent’s website and of the software promoted on his website.
The Panel therefore finds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant has established this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubebyclick.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 4, 2021
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