Google LLC v. Christopher Goldberg
Claim Number: FA2107001957498
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Christopher Goldberg (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtubeconverter.one> and <youtubedownload.cloud>, registered with Porkbun LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2021; the Forum received payment on July 30, 2021.
On July 30, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <youtubeconverter.one> and <youtubedownload.cloud> domain names are registered with Porkbun LLC and that Respondent is the current registrant of the names. 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 August 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@youtubeconverter.one, postmaster@youtubedownload.cloud. Also on August 3, 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 August 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <youtubeconverter.one> and <youtubedownload.cloud> domain names are confusingly similar to Complainant’s YOUTUBE mark.
2. Respondent does not have any rights or legitimate interests in the <youtubeconverter.one> and <youtubedownload.cloud> domain names.
3. Respondent registered and uses the <youtubeconverter.one> and <youtubedownload.cloud> domain names in bad faith.
B. Respondent did not file a Response.
Complainant YouTube, Inc. offers the well-known video sharing service, and holds a registration for the YOUTUBE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,525,802, registered October 28, 2008).
Respondent registered the <youtubeconverter.one> domain name on January 5, 2020 and the <youtubedownload.cloud> domain name on January 11, 2020. Respondent uses the domain names to resolve to a website that promotes software that enables Internet users to download and save content from Complainant’s YouTube website, in violation of its Terms of Service.
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 Panel finds that Complainant has rights in the YOUTUBE mark through Complainant’s registration of the mark with the USPTO. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”).
Respondent’s <youtubeconverter.one> and <youtubedownload.cloud> domain names use Complainant’s YOUTUBE mark and simply add generic terms and a gTLD. These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); 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 Respondent’s <youtubeconverter.one> and <youtubedownload.cloud> domain names are confusingly similar to Complainant’s YOUTUBE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), 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 contends that Respondent lacks rights and legitimate interests in the <youtubeconverter.one> and <youtubedownload.cloud> domain names because Respondent is not commonly known by the domain names. Complainant has not authorized Respondent to use its YOUTUBE mark. The WHOIS information for the disputed domain names lists the registrant as “Christopher Goldberg.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); see also Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Complainant argues that Respondent fails to use the <youtubeconverter.one> and <youtubedownload.cloud> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent uses them to enable and encourage Internet users to directly violate Complainant’s YouTube Terms of Service. Using a disputed domain name to enable a violation of terms of service does not constitute a bona fide offering 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 <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). Complainant provides screenshots showing that Respondent uses the disputed domain names to resolve to a website that promotes software that enables Internet users to download and save content from Complainant’s YouTube website, in direct violation of Complainant’s YouTube Terms of Service. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent uses the disputed domain names to divert Internet users to links unrelated to Complainant, likely for financial compensation. Complainant provides screenshots showing that the disputed domain names resolve to an offer of a “Free Download” of software named the “iTubeGo HD YT Downloader.” The Panel finds that this is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also See insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <youtubeconverter.one> and <youtubedownload.cloud> domain names in bad faith to attract Internet users to Respondent’s websites for financial compensation. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant also contends that Respondent’s bad faith is demonstrated by enabling users to violate Complainant’s Terms of Service. Using a disputed domain name to enable Internet users to violate a complainant’s terms of service demonstrates bad faith under Policy ¶ 4(a)(iii). See 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). Likewise, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the <youtubeconverter.one> and <youtubedownload.cloud> domain names in bad faith with knowledge of Complainant’s rights to the YOUTUBE mark. Complainant cites the extensive use, media coverage and fame of Complainant’s YOUTUBE mark, Complainant’s worldwide trademark filings, Respondent’s registration of two domain names that wholly incorporate the YOUTUBE mark, and the direct references to Complainant’s YouTube service on the resolving websites, and argues that it is inconceivable that Respondent registered the disputed domain names without actual knowledge of Complainant’s YOUTUBE mark. The Panel agrees and finds that this shows further bad faith under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant has satisfied 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 <youtubeconverter.one> and <youtubedownload.cloud> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 27, 2021
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