Google LLC v. Vlads Galinovs
Claim Number: FA2012001926271
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Vlads Galinovs (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtubetoptop.online> and <youtubevideo365.online>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2020; the Forum received payment on December 23, 2020.
On December 28, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <youtubetoptop.online> and <youtubevideo365.online> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 January 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 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@youtubetoptop.online, postmaster@youtubevideo365.online. Also on January 4, 2021, 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 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that the YOUTUBE mark is a coined term that was created by its then-owner YouTube, Inc. in February 2005 for use as the brand of a video sharing service. The <youtube.com> website was launched on April 24, 2005, and the YOUTUBE mark and related logos have been prominently featured since then at the website and otherwise in marketing for the service. The popularity of the <youtube.com> website grew quickly. In July 2006, Nielsen Netratings named <youtube.com> the fastest growing website between January and June 2006. The website ended that period with a monthly unique audience of 19.6 million, and with 724 million web page views. In August 2006, the Wall Street Journal reported that the <youtube.com> website hosted approximately 6.1 million videos and had about 500,000 user accounts. Time magazine hailed YouTube as the best invention of the year in its 2006 edition. In February 2007, Brandchannel announced that the YOUTUBE brand ranked third in its 2006 Reader’s Choice Awards, behind only GOOGLE and APPLE. By November of that year, comScore reported that YouTube users watched 2.9 billion videos and Nielsen Netratings reported that the service had 67.5 million unique users. Since then, YouTube rapidly became the leading online video sharing site that it is today. For 2013, Nielsen Netratings rated YouTube as the fifth “Top U.S. Web Brand” and the number one “U.S. Online Video Brand” with more than 128 million unique viewers. Interbrand recently ranked YouTube as the #30 best global brand. According to Alexa, YouTube is currently the second most viewed website in the world and it ranks in the top ten in numerous countries. Today, YouTube has more than 2 billion monthly logged-in users, and more than 500 hours of content are uploaded to YouTube every minute. There are localized versions of YouTube in more than 100 countries around the world and across 80 languages, making YouTube accessible to more than 95% of the world’s Internet users. Each day, people watch more than a billion hours of video on YouTube and generate billions of views. Complainant’s YouTube service reaches more 18-34 and 18-49 year olds in the U.S. than any television network (broadcast or cable) – and it does that on the YouTube mobile platform alone. In November 2006, Complainant acquired YouTube, Inc., and in 2007 was assigned the YOUTUBE mark and YouTube, Inc.’s other marks and their associated goodwill. Complainant has rights in the YOUTUBE mark through its registration in the United States in 2008.
Complainant alleges that the disputed domain names are identical or confusingly similar to its YOUTUBE mark as they merely add: (i) the non-distinctive, generic element “TopTop” or “Video365” and (ii) the non-distinctive top-level domain “.online.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the YOUTUBE mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses the disputed domain names in connection with commercial pornographic material. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has a pattern of bad faith registration based on Respondent’s registration of both disputed domain names. Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s disputed domain names, which are used in connection with commercial pornography Furthermore, Respondent had actual knowledge of Complainant’s rights to the YOUTUBE mark prior to registering the disputed domain names based on the famous nature of Complainant’s mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark YOUTUBE dating back to at least 2008, and uses it to provide a famous video sharing service.
The disputed domain names were registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that displays click-through links to commercial adult entertainment material.
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”).
The disputed domain names fully incorporate Complainant’s YOUTUBE mark and merely add the non-distinctive, generic element “TopTop” or “Video365” and the non-distinctive top-level domain “.online.” The addition of generic terns and a TLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized or licensed to Respondent any rights in the YOUTUBE mark. Respondent is not commonly known by the disputed domain names: when a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information for the disputed domain names lists the registrant as “Vlads Galinovs”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain names in connection with commercial pornographic material. Specifically, Complainant presents evidence showing that each disputed domain name resolves to a website that purports to provide links to online listings for singles; at the top of each of Respondent’s websites is a clickable gif image that purports to let Internet users either affirm that they are over 18 or exit the website; although the “I AM 18+” and “EXIT” images have the appearance of being independent, clickable links, they are actually part of the same clickable gif image and the same action ensues whether a user clicks on “I AM 18+” or “EXIT”; when Internet users click on the gif images on Respondent’s websites, they are redirected to a rotating series of domain names associated with commercial websites that feature pornographic images, adult content, and that promote various adult related services; Respondent likely obtains revenue from the click-through links. Using a confusingly similar domain name in connection with pornographic material may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”); see also Google Inc. v. Chris Gillespie, FA1434643 (Forum May 10, 2012) (“[T]he Panel finds that the previous use of the disputed domain names (resolving to adult oriented websites) is also evidence of Respondent’s lack of rights and legitimate interests in the domain names.”); see also Isleworth Land Co. v. Lost In Space, SA, FA0117330 (Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use). Further, use of a domain name to redirect users to unrelated third-party sites (whether or not they compete with Complainant) is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Therefore, the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent has engaged in a pattern of bad faith registration and use, referring to the two domain names challenged in the instant proceedings. However, it does not cite any other UDRP proceedings against Respondent. The Panel finds that two registrations are insufficient to establish a pattern. Therefore, the Panel finds that Complainant has failed to satisfy its burden of proof for this allegation.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already discussed, Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s disputed domain names featuring commercial adult entertainment material. Registering a confusingly similar domain name to attract Internet users to a respondent’s website featuring pornography can demonstrate bad faith per Policy ¶ (a)(iii). See Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). Bad faith registration and use has also been found where a respondent has commercially benefited through links unrelated to a complainant’s mark. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii), and/or 4(b)(iv), and/or (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 <youtubetoptop.online> and <youtubevideo365.online> domain names be TRANSFERRED from Respondent to Complainant,
Richard Hill, Panelist
Dated: January 27, 2021
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