Google LLC v. Abbigail Abril / AbrilAbbigail
Claim Number: FA2012001926541
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Abbigail Abril / AbrilAbbigail (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <youtubemp3.app> and <youtube3mp3.org>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2020; the Forum received payment on December 29, 2020.
On December 29, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <youtubemp3.app> and <youtube3mp3.org> 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@youtubemp3.app, postmaster@youtube3mp3.org. 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 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, Google LLC, operates an internet technology service company. Complainant has rights in the YOUTUBE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,711,233, registered Nov. 17, 2009). Respondent’s <youtubemp3.app> and <youtube3mp3.org> domain names are confusingly similar to Complainant’s YOUTUBE mark, the first only differing by the addition of the generic term “MP3” and the “.app” generic top-level domain (“gTLD”), and the second only differing by adding the number “3”, the term “MP3”, and the “.org” gTLD.
Respondent lacks rights and legitimate interests in the <youtubemp3.app> and <youtube3mp3.org> domain names as it is not commonly known by either disputed domain name and is neither an authorized user nor licensee of the YOUTUBE mark. Additionally, Respondent does not use the disputed domain name for 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 subvert Complainant’s YouTube Terms of Service by allowing users to download and save content from Complainant’s website in either mp3 or mp4 format. Respondent also uses the disputed domain names to distribute malware to Internet users’ devices. Further, the disputed domain names display pay-per-click hyperlinks which direct users to services unrelated to Complainant.
Respondent registered and uses the <youtubemp3.app> and <youtube3mp3.org> domain names in bad faith. Respondent registered the disputed domain name to create a likelihood of confusion with Complainant’s legitimate business to disrupt Complainant’s business for commercial gain. Furthermore, Respondent hosts pay-per-click advertisements and uses the disputed domain names to distribute malware. Respondent’s registration of multiple infringing domain names also establishes a pattern of bad faith registration. Respondent also provided false or misleading WHOIS information when registering the disputed domain names. Finally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark prior to registering the disputed domains.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Google LLC (“Complainant”) of Mountain View, CA, USA. Complainant was established under the GOOGLE name in 1997 and since that time has continuously offered a broad array of internet related technological products and services under its GOOGLE mark. Complainant is the owner of numerous domestic and international registrations for its GOOGLE mark and variations thereof constituting the family of GOOGLE marks. Complainant’s primary website is located at <google.com> and Complainant owns and operates approximately 200 websites at GOOGLE-formative domain names.
Respondent is Abbigail Abril / AbrilAbbigail (“Respondent”), of Los Angeles, CA, USA. Respondent’s registrar’s address is listed as Phoenix, AZ, USA. The Panel notes that the <youtubemp3.app> and <youtube3mp3.org> domain names were registered on or about July 30, 2019 and January 8, 2018, respectively.
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 asserts rights in the YOUTUBE mark through its registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office.”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 3,711,233, registered Nov. 17, 2009). The Panel here finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <youtubemp3.app> and <youtube3mp3.org> domain names are confusingly similar to Complainant’s YOUTUBE mark. The <youtubemp3.app> domain name only differs by the addition of the term “MP3” and the “.app” gTLD, and the <youtube3mp3.org> domain name only adds the number “3”, the term “MP3”, and the “.org” gTLD. Adding numbers, generic terms, and a gTLD does not sufficiently differentiate a domain name from a mark to eliminate the possibility of confusion under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Novartis AG v. boggs, william, FA 1570988 (Forum Aug. 25, 2014) (finding that the <freshlook2.com> domain name was confusingly similar to the complainant’s FRESHLOOK mark because the domain name contained the mark in its entirety and merely added the number “2”). The Panel here finds the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <youtubemp3.app> and <youtube3mp3.org> domain names as it is not commonly known by the disputed domain names and is neither an authorized user nor licensee of the YOUTUBE mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name 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 of record indicates that the registrant of the disputed domain names is “Abbigail Abril / AbrilAbbigail”, Respondent in this case. The Panel here finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the <youtubemp3.app> and <youtube3mp3.org> domain names in connection with any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent purports to allow Internet users to download and save content from Complainant’s <youtube.com> website, directly violating Complainant’s YouTube Terms of Service. Previous Panels have found that such use of a disputed domain name does not constitute a bona fide offer of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (no rights or legitimate interests created by the respondent’s use of the domain name in connection with a website that enabled Internet users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Services). Complainant provides evidence of Respondent offering these services to Internet users. Complainant also provides a copy of its YouTube Terms of Service. The Panel here finds Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant also argues that Respondent lacks rights and legitimate interests in the <youtubemp3.app> and <youtube3mp3.org> names as Respondent uses the disputed domains to distribute malware to Internet users’ devices. Using an infringing domain name to distribute harmful software is neither a bona fide offer of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant provides evidence of the malware that Respondent allegedly attempts to install on users’ devices. The Panel here finds that Respondent’s action related to malware distribution supports a finding that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent lacks rights and legitimate interests in the <youtubemp3.app> and <youtube3mp3.org> domain names as Respondent offers pay-per-click hyperlinks which direct users to services unrelated to Complainant’s business. Such use of a disputed domain does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it equate to a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides evidence of the disputed domain names redirecting to other services. The Panel here finds Respondent lacks rights and legitimate interests in the disputed domains under Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant alleges Respondent registered and uses the <youtubemp3.app> and <youtube3mp3.org> domain names in bad faith as Respondent disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), registering an infringing domain name to compete with Complainant displays bad faith disruption of another’s business. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Here, Respondent registered the disputed domain names to enable Internet users to access and save Complainant’s content, a violation of Complainant’s YouTube Terms of Service. Complainant provides a screenshot as evidence of Respondent’s use of the disputed domain names. It also provides a copy of the YouTube Terms of Service as further evidence of Respondent’s violation. The Panel here finds that Respondent’s disruption in the manner described evinces bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant also claims that Respondent registered and uses the <youtubemp3.app> and <youtube3mp3.org> domain names in bad faith because Respondent registered the disputed domain name to create a likelihood of confusion with Complainant’s legitimate business to generate commercial gain for Respondent. Registering an infringing domain name to redirect users to different websites, even unrelated ones, is considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See 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). Complainant provides evidence of Respondent linking to other services, for which Respondent presumably receives financial benefit. The Panel here finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent registered and uses the <youtubemp3.app> and <youtube3mp3.org> domain names while having actual knowledge of Complainant’s rights in the YOUTUBE mark. Under Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of a mark and the use the Respondent makes of the disputed domain. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Respondent uses the disputed domain names to allow Internet users to download and save content from Complainant’s <youtube.com> service. Additionally, Complainant provides evidence of the extensive media coverage around itself and its acquisition of YouTube in 2006. The Panel here finds Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark, and therefore registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubemp3.app> and <youtube3mp3.org> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 12, 2021
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