Google LLC v. Nir Schwartz
Claim Number: FA2102001933783
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Nir Schwartz (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubecomtomp3.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2021; the Forum received payment on February 26, 2021.
On March 1, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <youtubecomtomp3.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 March 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@youtubecomtomp3.com. Also on March 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 March 29, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a well-known internet company. 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 November 2006, Complainant acquired YouTube, Inc., and in 2007 was assigned the YOUTUBE mark and YouTube, Inc.’s other marks and their associated goodwill. 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. Complainant has rights in the YOUTUBE mark through its registration of the mark in the United States in 2009. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed name is confusingly similar to its YOUTUBE mark as it includes the mark in its entirety and merely attaches the generic/descriptive terms “COM”, “TO” and “MP3” along with the generic top-level domain “.COM”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lack rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the YOUTUBE mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use as Respondent uses the disputed domain name to encourage users to violate YouTube’s terms of service and to distribute unwanted software that may function as malware. Specifically, Respondent’s website encourages and claims to enable Internet users to download and save content from Complainant’s YouTube website. Indeed, Respondent’s website states “Enter to YouTube, pick the video you want download to mp3, copy and paste the URL and let the YouTube to MP3 do its magic.” Respondent’s website encourages users to “Download YouTube to mp3” in order to download and save content from Complainant’s YouTube website. Respondent’s website features an entry box where Internet users are encouraged to enter a YouTube video URL and then click “Download MP3”, “Download MP4,” or “Download MP4HD.” The service offered by Respondent at the resolving website directly violates, or encourages users directly to violate, Complainant’s YouTube Terms of Service. Further, a user that clicks the “Download MP3” button is redirected to the <product.directredirection.com> website, which encourages users to download software that is malware. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and used the domain names in bad faith. Respondent misrepresented itself as the Complainant for personal gain and registered the disputed domain name with actual knowledge of Complainant’s rights to the YOUTUBE mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark YOUTUBE and uses it to provide a popular video sharing service. The mark is famous.
Complainant’s rights in its mark date back to at least 2009.
The disputed domain name was registered in 2014.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website purports to enable Internet users to download and save content from Complainant’s YouTube website, in violation of the applicable terms of service. However, a user that clicks the “Download MP3” button is redirected to a website that encourages users to download malware.
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 name includes Complainant’s mark in its entirety and merely adds the generic/descriptive terms “COM”, “TO” and “MP3” as well as the gTLD “.com”. The addition of a descriptive term and/or a generic top level domain fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain names] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain names and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Google LLC v. Robert Stabile, FA1926977 (Forum Feb. 15, 2021) (The “<youtubetomp3dl.com> . . . domain name[ is] confusingly similar to Complainant’s YOUTUBE mark, only differing by adding the generic words ‘to’ and ‘mp3’, the letters ‘dl.’”). Therefore, the Panel finds that the disputed domain names is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its YOUTUBE mark. Respondent is not commonly known by the disputed domain name: when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Here, the WHOIS information for the disputed domain name lists the registrant as “Nir Schwartz”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
The resolving website purports to enable Internet users to download and save content from Complainant’s YouTube website; Respondent thus encourages and claims to enable Internet users to directly violate Complainant’s YouTube Terms of Service, which expressly prohibit the unauthorized downloading and saving of content from the YouTube website and providing means to circumvent features of the YouTube Service. When presented with nearly identical circumstances, past Panels have found that the respondent lacked rights or legitimate interests in the domain name. See Google LLC v. Registration Private / Domains By Proxy, LLC / Domain Registrar / SilentRegister.com, FA1920698 (Forum Dec. 18, 2020) (no rights or legitimate interests where the respondent used the <youtube-audio.cc> and <youtube-audio.org> domain names with websites that enabled users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service); see also Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (no rights or legitimate interests created by the respondent’s use of the <listentoyoutube.com> 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); see also Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the <10youtube.com> domain name in association 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 Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Google Inc. v David Miller, FA1067791 (Forum Oct. 24, 2007) (finding that respondent’s use of the <youtubex.com> domain name in association with a website that enabled Internet users to download and save video clips from Google’s YouTube service in violation of Google’s YouTube Terms of Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, Respondent uses the disputed domain name to distribute malware to unsuspecting users. Using a confusingly similar domain name to distribute malware 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). 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).”). Therefore, the Panel again finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent has exhibited a pattern of bad faith registration and use of domain names. However, it cites only one UDRP decision involving Respondent. The Panel finds that Complainant has failed to discharge its burden of proof for this allegation and it will not further discuss 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 name.
Indeed, as already noted, the resolving website purports to enable Internet users to violate Complainant’s YouTube Terms of Service. Past panels have found that such use constitutes bad faith use and registration under Policy ¶ 4(b)(iii) Further, Respondent is using the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s YOUTUBE mark; this evidences bad faith registration and use under Policy ¶ 4(b)(iv). See Google LLC v. Registration Private / Domains By Proxy, LLC / Domain Registrar / SilentRegister.com, FA1920698 (Forum Dec. 18, 2020) (finding bad faith use and registration where the respondent used the <youtube-audio.cc> and <youtube-audio.org> domain names with websites that enabled users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service); see also Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (finding use of the <listentoyoutube.com> domain name in association with a website that enabled download of content from Google’s YouTube website in violation of Google’s YouTube Terms of Service to constitute bad faith use and registration under the Policy); see also Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding use of the <10youtube.com > domain name in association with a website that enabled download of content from Google’s YouTube website in violation of Google’s YouTube Terms of Service to constitute bad faith use and registration under the Policy); see also Google Inc. v David Miller, FA1067791 (Forum Oct. 24, 2007) (finding use of the <youtubex.com> domain name in association with a website that enabled download of video clips from Google’s YouTube website in violation of Google’s YouTube Terms of Service to constitute bad faith use and registration under the Policy). Thus the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).
In addition, also as already noted, Respondent uses the disputed domain name to spread malicious software. Use of a disputed domain name to install malware onto Internet users’ computers evinces bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website explicitly refers to Complainant’s YouTube service. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(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 <youtubecomtomp3.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 29, 2021
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