Google LLC v. Gabriel Duby
Claim Number: FA2104001940674
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Gabriel Duby (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubeconvert.cc>, registered with Porkbun 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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2021; the Forum received payment on April 7, 2021.
On April 8, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <youtubeconvert.cc> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 April 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@youtubeconvert.cc. Also on April 13, 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 May 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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 one of the world’s leading technology companies. Complainant has rights in the YOUTUBE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,525,802, registered Oct. 28, 2008). See Compl. Annex 10. Respondent’s <youtubeconvert.cc> domain name is identical or confusingly similar to Complainant’s YOUTUBE mark, only differing by the addition of the generic term “convert” and the “.cc” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <youtubeconvert.cc> domain name as it is not commonly known by the disputed domain name, and is neither an authorized user or 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 supposedly allows Internet users to download videos off of Complainant’s <youtube.com> website, violating Complainant’s YouTube Terms of Service.
Respondent registered and uses the <youtubeconvert.cc> domain name in bad faith. Respondent purports to allow Internet users to download content off of Complainant’s <youtube.com> website. Such use is disruptive of Complainant’s business, and may lead to commercial gain for Respondent. Additionally, given the fame of Complainant’s mark and the use Respondent makes of the disputed domain, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the YOUTUBE mark.
B. Respondent
The <youtubeconvert.cc> domain name was registered on October 28, 2015. However, Respondent failed to submit a Response in this proceeding.
1. Complainant owns registered trademarks for the mark YOUTUBE dating back to 2007, although its predecessor in interest began using the YOUTUBE mark in 2005. It has trademark registrations in the United States and numerous countries across the globe, each of which are valid and in full force and effect. See Amended Compl. Annex 10.
2. Complaint’s mark is famous and is used to provide one of the most widely used video sharing services globally. Its’ fame pre-dates the registration of the disputed domain name <youtubeconvert.cc>, registered by Respondent on October 28, 2015.
3. The disputed domain name is identical or confusingly similar to the YOUTUBE mark.
4. Complainant has not licensed or otherwise authorized Respondent to use its mark, nor is Respondent commonly known by the mark.
5. Complainant has established that the disputed domain name has been registered and used in bad faith.
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 YOUTUBE mark was created and used by its then-owner YouTube, Inc. in February 2005 for use in connection with a video sharing service. Complainant, Google LLC, acquired the YOUTUBE mark and service in November 2006 and recorded the assignment of the mark in 2007. See Amend. Complaint at ¶¶ 12 and 13.
The Complainant’s Mark is famous, and at or around the time of the registration of the disputed domain names “was the number one ‘U.S. Online Video Brand’ with more than 128 million unique views”. See Amend. Compl. at p. 4 (citing Nielsen’s Netratings attached as Annex 7).
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 DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 3,525,802, registered Oct. 28, 2008). See Amend. Compl. Annex 10.
Complainant argues that Respondent’s <youtubeconvert.cc> domain name is confusingly similar to Complainant’s YOUTUBE mark, only differing by the addition of the generic term “convert” and the “.cc” ccTLD. Addition of a generic term and a ccTLD may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Wicked Weasel Pty Ltd v. Kulich / GS, FA 1604785 (Forum Apr. 23, 2015) (finding, “The addition of a ccTLD to a registered trademark is not sufficient to overcome a finding of confusing similarity under a Policy ¶4(a)(i) analysis.”).
Similarly, the Panel finds that the disputed domain name <youtubeconvert.cc> is confusingly similar to Complainant’s YOUTUBE mark under Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <youtubeconvert.cc> domain name as it is not commonly known by the disputed domain name, and is neither an authorized user nor licensee of the YOUTUBE mark. When no response is given, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, a respondent’s lack of authorization to use a mark can indicate a respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record identifies “Gabriel Duby” as the registrant of the disputed domain name. See Amend. Compl. Annex 4. The Panel therefore finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <youtubeconvert.cc> domain name for a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Respondent instead purports to allow Internet users to download videos off of Complainant’s <youtube.com> website in violation of Complainant’s YouTube Terms of Service. Previous Panels have held that using an infringing domain to violate Complainant’s YouTube Terms of Service 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). See also Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (“the disputed domain name resolves to a website featuring “10YOUTUBE” in a brand-like manner, and purports to enable Internet users to download and save video clips from Complainant’s website, in direct violation of Complainant’s Terms of Service.”). See also e.g., Google LLC v. Chen Hui, FA 1935156 (Forum Mar. 31, 2021) (finding lack of rights or interests in similar circumstances).
Complainant provides screenshots of the resolving website for the disputed domain name as evidence of Respondent’s competing use. See Amend Compl. Annex 11. Additionally, Complainant provides a copy of its YouTube Terms of Service dated December 10, 2019 to establish that such actions are a violation. See Amend. Compl. Ex. 12. For the reasons stated above, this Panel finds Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant claims that Respondent registered and uses the <youtubeconvert.cc> domain name in bad faith essentially on two grounds: (a) Respondent had actual and/or constructive knowledge of Complainant’s rights in the YOUTUBE mark at the time Respondent registered and subsequently used the disputed domain name, and (b) the disputed domain name is being used in a brand-like manner throughout the website directly targeting Complainant’s YouTube service to attract Internet users to utilize Respondent’s service to violate Complainant’s YouTube Terms of Service.
Although constructive knowledge is insufficient for a finding of bad faith, Panels have found actual knowledge based on the fame and notoriety of a mark. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). See also Google LLC v. Kamskova S Evgenevna, FA1905001842393 (Forum June 6, 2019) (“Evidence that a mark is famous and extensively used can demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration of a disputed domain name.”). Complainant argues that the fame and uniqueness of the YOUTUBE mark makes it improbable that Respondent created the <youtubeconvert.cc> domain name independently and without the knowledge of Complainant’s YOUTUBE marks. This Panel agrees that Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark at the time it registered the disputed domain names.
Additionally, as stated above, Respondent uses the disputed domain names to offer Internet users software which purportedly downloads and saves an audio version of the video. See Amend. Compl. Ex. 11. Complainant provides snapshots of Respondent’s site which prior to the filing of this dispute, used a logo that incorporated the YouTube mark. In other words, Respondent uses the YOUTUBE mark both in the domain name and throughout its Website in a brand-like manner to attract Internet users to its own websites to utilize Respondent’s services. Allowing Internet users to download such content may qualify as competing use, and is both disruptive of Complainant’s business and may lead to commercial gain for Respondent under Policy ¶¶ 4(b)(iii) and (iv). 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)); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services); see additionally 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).
For all of the above reasons, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(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 <youtubeconvert.cc> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: May 12, 2021
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