Google LLC v. Host Master / 1337 Services LLC
Claim Number: FA2102001933662
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Host Master / 1337 Services LLC (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubemp3.today>, (‘the Domain Name’) registered with Tucows Domains Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2021; the Forum received payment on February 26, 2021.
On February 26, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <youtubemp3.today> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 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.today. Also on March 2, 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 March 28, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant is the owner of the mark YOUTUBE, registered, inter alia in the USA for video sharing services with first use recorded in the USA as 2005.
The Domain Name registered in 2017 is confusingly similar to the Complainant’s trade mark, adding only the generic terms ‘mp3’, and the gTLD “.today” which do not prevent said confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name is being used for a website using a logo similar to the Complainant’s logo that encourages and claims to enable Internet users to download and save content from Complainant’s YOUTUBE website. Respondent’s website offers malware and pay per click links. The service offered by Respondent at the resolving website directly violates, or encourages users directly to violate, Complainant’s YOUTUBE Terms of Service. Specifically, YOUTUBE’s Terms of Service expressly prohibits (i) the downloading and saving of content from the YOUTUBE website unless expressly authorized by Complainant, and (ii) the circumventing (or attempted circumventing) of any part of the YOUTUBE service including features that prevent or restrict the copying or other use of content on the YOUTUBE site.
Respondent’s use of the Domain Name is not a bona fide offering of services or legitimate non-commercial or fair use. It is registration and use in opportunistic bad faith diverting Internet users for commercial gain and disrupting the Complainant’s business. Offering malware and pay per click links are both bad faith per se. The Respondent has been the subject of a number of adverse decisions under the UDRP which constitutes a pattern of activity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark YOUTUBE, registered, inter alia in the USA for video sharing services with first use recorded in the USA as 2005.
The Domain Name registered in 2017 has been used for a competing web site using a logo similar to that of the Complainant and purporting to allow users to download and save content from the Complainant’s web site and offering malware and pay per click links. Respondent has been the subject of a number of adverse decisions under the UDRP.
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 Domain Name in this Complaint combine the Complainant’s YOUTUBE mark (registered, inter alia, in the USA for video sharing services with first use in commerce in USA recorded as 2005), the generic term ‘mp3’ and the gTLD “.today”.
The addition of the generic term ‘mp3’ does not prevent confusing similarity between the Domain Name and the Complainant’s YOUTUBE mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i)).
The gTLD “.today” does not serve to distinguish the Domain Name from the YOUTUBE mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purposes of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial so cannot be legitimate noncommercial or fair use.
The Respondent has used the site attached to the Domain Name for competing services using a logo that is similar to that of the Complainant without making it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate noncommercial or fair use. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
Further the site attached to the Domain Name encourages users to breach the Complainant’s terms and conditions. See 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).”).
The Respondent has used the site attached to the Domain Name for commercial links which is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Ashley Furniture Industries Inc. v. domain admin /private registrations aitken Gesellschaft, FA 1506001626253 (Forum July 29, 2015).
Offering malware cannot be a right or legitimate interests in a Domain Name. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy 4(c)(i) & (iii).”);
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s well known mark.
In the opinion of the panelist the use made of the Domain Name in relation to the site attached to the Domain Name is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing services and pay per click links under a domain name containing the Complainant’s mark and a similar logo to that of the Complainant as a masthead. The reference to the Complainant’s services and the use of a logo similar to that of the Complainant shows that the Respondent was aware of the Complainant’s rights, business and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use). See Health Republic Insurance Company v. Above.comLegal, FA 1506001622088 (Forum July 10, 2015) re diversion to commercial links.
Respondent encourages users to violate the YOUTUBE Terms of Service. Under similar circumstances, previous Panels have found that providing a service that allows users to violate a complainant’s terms of service constitutes bad faith under Policy ¶ 4(b)(iii). See Google LLC v. Nafiz / NZNBD FA 1922009 (Forum Dec. 28, 2020) (“offering of such service is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the domain name per Policy ¶ 4(b)(iii)”).
Using a disputed domain name to disseminate malware indicates bad faith and further disruption of the Complainant’s business. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
A respondent’s prior adverse UDRP decisions can demonstrates pattern of activity and bad faith per Policy 4(b)(ii). See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018)
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Policy paragraphs 4(b)(ii), (iii) and (iv).
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.today> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 29, 2021
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