Google LLC v. Y. Aioanei Dablanca German
Claim Number: FA2012001926270
Complainant is Google LLC (“Complainant”), represented by John C. Nishi of Dickinson Wright PLLC, Michigan, USA. Respondent is Y. Aioanei Dablanca German (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubemp3.pro>, registered with NameCheap, Inc.
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 23, 2020. The Forum received payment on December 23, 2020.
On December 27, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <youtubemp3.pro> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2021 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.pro. Also on December 29, 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 January 25, 2021, 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, Google LLC, operates a global information technology company. Complainant has rights in the YOUTUBE mark through, inter alia, its registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <youtubemp3.pro> domain name is confusingly similar to Complainant’s YOUTUBE mark.
Respondent lacks rights and legitimate interests in the <youtubemp3.pro> domain name as he is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the YOUTUBE mark. Additionally, Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent purports to offer Internet users the ability to download and save content from Complainant’s YouTube service. Respondent also provides links to a website which distributes malware, and also hosts pay-per-click advertising which is unrelated to Complainant’s business.
Respondent registered and uses the <youtubemp3.pro> domain name in bad faith. Respondent creates a likelihood of confusion by using Complainant’s mark in his website which leads to commercial gain for Respondent. Respondent also purports to enable Internet users to violate Complainant’s YouTube Terms of Service, disrupting Complainant’s business. Additionally, Respondent uses the disputed domain name to distribute malware. Furthermore, Respondent uses the disputed domain name to present Internet users with pay-per-click advertising for services unrelated to Complainant through which Respondent, presumably, reaps financial gain. Complainant also points to a previous UDRP decision against Respondent to establish a pattern of bad faith registration. Finally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark prior to registration of the disputed domain name.
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 numerous registrations worldwide, including with the USPTO (e.g. Reg. 3,525,802, registered Oct. 28, 2008) and in Panama, where Respondent is located, (Reg. 157576, registered Dec. 15, 2006).
Respondent’s <youtubemp3.pro> domain name is confusingly similar to Complainant’s YOUTUBE mark, differing only by the addition of the generic term “MP3” and the inconsequential “.pro” 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 <youtubemp3.pro> domain name was registered on November 27, 2018, 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 which displays Complainant’s YOUTUBE mark and promotes software to enable Internet users to download and convert content from Complainant’s YOUTUBE site to MP3 format, contrary to Complainant’s terms of use. The website also presents Internet users with pay-per-click advertising and a link associated with malware.
Use of a domain name contrary to the YouTube Terms of Use has been found not to give rise to rights or legitimate interests. 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 <youtubemp3.pro> 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 <youtubemp3.pro> domain name under Policy ¶ 4(a)(ii).
Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.
On October 2, 2018, a few weeks before registering the disputed domain name <youtubemp3.pro> on November 27, 2018, Respondent registered the domain name <savefrom.biz>, which resolved to webpage displaying the title “Youtube Video Downloader” and containing a search panel for users to enter links allegedly to download online videos. See Magicbit, Inc. v. Y. Aioanei Dablanca German, FA1838214 (Forum May 8, 2019). In finding bad faith registration and use by Respondent in that case, the learned panelist said:
“…Respondent was clearly intending to pretend that it was Complainant, interrupt its business, mislead internet users into believing that they had reached Complainant’s website and take business that was intended for Complainant.”
The Panel finds that Respondent has engaged in the same behavior in relation to the <youtubemp3.pro> domain name.
The Panel is satisfied that Respondent clearly had Complainant and its famous YOUTUBE mark in mind when registering the disputed domain name and did so for the purpose set out in Paragraph 4(b)(iii). Further, that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
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 <youtubemp3.pro> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 27, 2021
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