Google Inc. v David Miller
Claim Number: FA0708001067791
PARTIES
Complainant is Google Inc. (“Complainant”), represented by James
L. Vana, of Perkins Coie LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubex.com>, registered with GoDaddy.com,
Inc.
PANEL
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 23, 2007; the
National Arbitration Forum received a hard copy of the Complaint on August 27, 2007.
On August 24, 2007, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <youtubex.com> domain name is
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On September 6, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 26, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@youtubex.com by e-mail.
On September 11, 2007, Respondent requested an extension of the date by
which a timely Response could be filed.
The National Arbitration Forum subsequently granted this request,
extending the date by which a timely Response could be filed until October 11,
2007.
A timely Response was received and determined to be complete on October 11, 2007.
A timely Additional Submission was received from Complainant on October
16, 2007 in accordance with the Forum’s Supplemental Rule 7.
On October 17, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant contends that YouTube was founded on February 14, 2005, and
registered the domain name <youtube.com> on February 15, 2005. YouTube
provides online video services, with an Internet website where users can watch
and share original videos. YouTube does not permit videos from its site to be
downloaded. All of the YouTube Services have been provided under the YOUTUBE mark
continuously since on or around March 1, 2005. YouTube has attracted
significant media attention, including several articles published prior to
April 4, 2006 (the registration date for the Domain Name).
In November, 2006, YouTube, Inc. was purchased by Complainant, and now
operates as YouTube, LLC, a subsidiary of Complainant.
Complainant is a
The Domain Name at
dispute was registered or acquired by Respondent on April 4, 2006. The Domain
Name currently resolves to a website featuring a service allowing users to
download and save video clips provided by various third party websites,
including Google and YouTube. MindImage LLC, an entity owned or controlled by
Respondent, has registered numerous other domain names incorporating the
YOUTUBE mark, including the following:
-
<howtosaveyoutubevideos.info>
-
<howtodownloadyoutubevideos.info>
-
<youtubevideos.info>
-
<saveyoutubevideos.com>
Respondent, or MindImage LLC (an entity owned or controlled by Respondent), is the registrant of record for numerous domain names incorporating third party registered trademarks, or minor spelling variations of third party registered trademarks, including the following:
-
<myspacemusicvideosx.com>
-
<yahoovideosx.com>
-
<Googlevideosx.com>
-
<Copperton.org>
Complainant has sent various call letters to Respondent, demanding transfer of the Domain Name at dispute from Respondent to Complainant.
Complainant contends that YouTube
has used the YOUTUBE mark as a trademark continuously since prior to August 4,
2006, the registration date for the Domain Name. Further, the YOUTUBE mark is
highly distinctive. Finally, YouTube's use of this mark began, and has
continued, in the
Complainant further contends that a domain name is "nearly identical or confusingly similar" to a complainant's mark when it "fully incorporate[s] said mark.” Here, the Domain Name incorporates the YOUTUBE mark in its entirety and is thus confusingly similar to the YOUTUBE mark.
A domain name registrant may not avoid likely confusion by simply adding a descriptive or non-distinctive term to another's mark. The Domain Name at dispute is simply the combination of the YOUTUBE mark with the letter "x." The Domain Name thus implies that Respondent is either Complainant or YouTube or affiliated with Complainant or YouTube, and is offering services specifically related to and focused on YouTube's video services. Consumers are likely to accept this implication, especially given the focus of the <youtubex.com> website on YouTube’s services. This is clearly misleading, as Respondent has no connection with Complainant or YouTube, and is not, and never has been, authorized to use the YOUTUBE mark in any manner. As such, the Domain Name at dispute is confusingly similar to the Complainant’s mark.
The Domain Name at dispute currently resolves to a website featuring a service allowing users to download and save video clips provided by various third party websites, including Google and YouTube. This service is in direct violation of YouTube's terms of use, which expressly prohibit the downloading and saving of videos from the YouTube website. Such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names. Respondent is clearly making commercial use of the Domain Name at dispute, as Respondent has affirmatively stated in correspondence to Complainant that "youtubex.com provides our business with 80% of our income.”
From its earliest date of operation, the website to which the Domain Name at dispute resolves made explicit reference to YouTube, its mark and its business, with links to YouTube’s website. Such demonstrated awareness by the Respondent of Complainant's mark defeats a claim by the registrant of rights or legitimate interests in the domain name. Further Respondent’s use of a disclaimer at certain times on its website is evidence of Respondent’s awareness of YouTube and its famous mark.
On information and belief, Respondent is not commonly known by the name or nickname of the Domain Names. Neither "Ryan Perry" nor “MindImage" is remotely similar to "YouTube.” Further, Respondent’s WHOIS information in connection with the Domain Name makes no mention of the Domain Name or the YOUTUBE mark as Respondent’s name or nickname.
Respondent
is not now, and never has been, licensed or authorized to use the YOUTUBE mark
in any manner by Google or YouTube. Thus, Respondent has no rights or
legitimate interests in the Domain Name.
According
to Complainant the evidence overwhelmingly supports the conclusion that
Respondent registered and is using the Domain Name at dispute in bad faith.
First, the YOUTUBE mark is fanciful and unique, and was so prior to the date on
which the Domain Name was registered, such that it is extremely unlikely that
Respondent simply devised the Domain Name at dispute on its own.
Second, Respondent’s current use of the Domain
Name to resolve to a site offering services directly related to YouTube's
services (but in violation of YouTube's terms of use) constitutes bad faith use
and registration. Finally, registration by Respondent (or an entity owned or
controlled by Respondent) of numerous domain names containing the YOUTUBE mark
and other domain names containing third party registered trademarks provides
additional evidence of bad faith use and registration of the Domain Name.
Respondent contends that the domain name at
dispute is not identical or confusingly similar to the Complainant's mark. Complainant held no trademark rights in
“YouTube” at the time Respondent registered his domain. Additionally, Complainant has failed to
establish that a secondary meaning in its mark existed through extensive use in
the marketplace at the time of Respondent's registration of the <youtubex.com> domain name. Respondent's domain, in accord with previous
Forum findings, deviates and is sufficiently distinguished from Complainant's
mark and does not create a likelihood of confusion.
Respondent's <youtubex.com> domain name is not identical to the Complainant's domain name or trademark. Respondent's use of the terms “you” and “tube” within his domain name is offset by the letter “x.” The addition of this representative letter eliminates any perceived identicalness. The “x” designator is a tool often used in marketing circles to indicate an increase in quality, intensity, or dissimilarity. This use of “x” in marketing has come to implicitly embody the idea of the “x-factor,” an increase in performance or desirability that, combined with the underlying product, signifies the superiority of the goods and services offered.
Similarly, Respondent's domain name is not confusingly similar to the Complainant's domain name. The use of another party's mark in a domain to describe the business of the user has been found by the Forum to be a nominative fair use.
Furthermore, Respondent's <youtubex.com> domain name was registered on April 4, 2006. Complainant's domain was registered, in comparison, on February 14, 2005.
Complainant filed for trademark registration with the United States Patent and Trademark Office on January 30, 2006. Complainant's trademark application was, therefore, still pending when Respondent registered his domain. The National Arbitration Forum has previously recognized that “an application for mark is not per se sufficient to establish rights to a trademark for the purposes of the UDRP....” Thus, Complainant has failed to establish trademark registration, and subsequently prima facie rights, at the time of the registration of the <youtubex.com> domain name.
Complainant's mark consists of the generic terms and common words “you” and “tube.” The Forum has previously found that domain registrants cannot monopolize the use of generic terms and common words in domain names.
Since Complainant did not have a registered trademark at the time Respondent registered his <youtubex.com> domain name, Complainant must show that a secondary meaning had been established through its extensive use of the mark in the marketplace in order to establish common law rights. Complainant has failed to submit evidence sufficient to support that it has such rights.
Precisely because Complainant's mark consists of generic terms and common words, Complainant cannot, by definition, submit evidence sufficient to support a finding of secondary meaning. “The extensive use of a generic term... can never give it distinctive or non-descriptive secondary meaning indicating origin.” Therefore, Complainant has failed to establish that Respondent's domain is identical or confusingly similar.
Respondent contends that it has rights and legitimate interests in the domain name at dispute. Respondent has prepared his domain name, before notice of this dispute, for use in a bona fide offering of services ancillary to the services offered by the Complainant. Respondent had made nominative fair use of the Complainant’s mark in his domain name to indicate the target users of his services. Respondent has listed a disclaimer on his website disavowing a connection with the Complainant’s services, and Respondent’s software product does not compete with the Complainant’s video services.
Respondent prepared his domain name, before notice of
this dispute, for use in a bona fide
offering of services ancillary to Complainant’s video services. Respondent’s <youtubex.com> domain allows users of <youtubex.com> to download videos from the YouTube service
for personal use. Respondent has
expended significant time and effort in creating this ancillary software
product and website. Respondent’s domain
generates commercial revenue through a pay-per-click advertising program sponsored
by Yahoo; he does not directly profit from the use or sale of Complainant’s
non-exclusive license of copyrighted material.
Respondent’s profits derive from user clicks garnered from the
popularity of his video downloader and its function of aiding users in the
exercise of their fair use rights. The
Forum has previously recognized that this use, offering companion goods or
services at a domain that incorporates the name of the principal service
provider, is a nominative fair use of a mark.
Complainant alleges that Respondent’s website is not
a bona fide offering of services
because his downloading service allegedly violates YouTube’s Terms of Use. This assertion is clearly mistaken. At the time of registration of Respondent’s
domain name, Complainant’s Terms of Use did not prohibit the downloading of
content from Complainant’s website. In fact, Complainant’s Terms of Use
explicitly authorized the downloading of videos “for personal use.” Respondent
relied upon this fact in preparing his domain and software for use in
conjunction with Complainant’s video services.
Furthermore, Complainant changed its Terms of Use after Respondent registered and prepared
the <youtubex.com> domain name
for a bona fide offering of
services. Complainant’s Terms of Use
were later amended to deny users the right to download the video files hosted
on its website by prohibiting interoperability with third party software
products. Complainant has, therefore,
attempted to deny Respondent of his fair use right to interoperability, and has
attempted to use evidence of that denial in support of its contention that
Respondent’s website does not constitute a bona
fide offering of services. The determination of the Respondent’s fair use
right to interoperability is beyond the limited scope of the UDRP.
Respondent has made nominative fair use of “YouTube”
in connection with his <youtubex.com>
domain name. As previously stated,
incorporation of the Complainant’s name in the Respondent’s domain name to
identify Respondent’s products as working in conjunction with Complainant’s
video services has been found by the Forum and WIPO to be nominative fair
use.
Furthermore,
Complainant
concedes that Respondent has listed a disclaimer on his website in the past,
disavowing association with the Complainant’s services. The Forum has recognized the nominative use
of the Complainant’s name in combination with such a disclaimer as fair
use.
Complainant
fails to recognize Respondent’s current disclaimer, displayed prominently on
Respondent’s website next to the YouTube logo.
Respondent’s current disclaimer states in unequivocal terms that
Respondent is not YouTube and does not offer the same services as YouTube. Respondent’s disclaimer specifically states
the nature of his business and its relationship with the YouTube video service.
Respondent’s
services do not directly compete with Complainant’s services. Respondent’s downloading services work in
conjunction with Complainant’s services.
Respondent’s
disclaimer of association with Complainant’s services evidences the fact that
Respondent has not intended to misleadingly divert consumers from the
Complainant’s services or to tarnish the goodwill associated with Complainant’s
mark. Respondent has no personal or
economic incentive to do so. In fact,
Respondent’s commercial success is directly proportional to the success of the
Complainant’s business. Respondent’s
business’s symbiotic relationship with the Complainant’s business gives
Respondent the economic incentive to ensure that Complainant’s business grows
and flourishes. Therefore, Complainant has failed to show that Respondent
intended to divert consumers or tarnish Complainant’s mark.
Complainant
alleges that Respondent’s WHOIS information inaccurately reflects the identity
of Respondent and fails to mention “YouTube.”
Respondent agrees that he has never been commonly known as
“YouTube.” Indeed, Respondent is
commonly known as “YouTubeX,” a mark that makes nominative fair use of the
Complainant’s mark to identify Respondent’s target audience. The fact that Respondent’s WHOIS information
does not reflect the title of his website has no bearing on whether Respondent
has legitimate rights in his domain. The
use of a domain name within the registrant’s WHOIS information is not a
necessary condition of legitimate rights, even though it may be sufficient to show legitimate rights.
Additionally,
Complainant makes several references to an individual named Ryan Perry and a
company named MindImage throughout the Complaint, as well as several domains
allegedly owned by both. Respondent is
neither of these entities. Respondent,
as reflected by the <youtubex.com>
WHOIS records, is David Miller.
Complainant has presented no evidence of a connection between Respondent
David Miller and Ryan Perry, nor evidence of a connection between David Miller
and MindImage. Instead, Complainant has
attempted to confuse the two by introducing evidence of an email communication
that alleges Respondent’s website is under the control of Ryan Perry and MindImage,
and that Respondent is the owner of numerous domain names. Respondent has never authorized an individual
named Ryan Perry to speak on his behalf, nor is Ryan Perry the current owner of
the domain. Furthermore, Respondent does
not own the numerous domains listed by Complainant.
MindImage
is a web application developer that developed Respondent’s software product and
hosted Respondent’s domain.
Additionally, Respondent purchased his domain from Ryan Perry. The Forum has recognized that a change in
registrant information reflecting a change in ownership is considered a new
registration. In confusing Respondent
with MindImage, Complainant has attempted to disguise its dislike of the
Respondent’s exercise of fair use rights as the legitimate subject matter of a
domain dispute. Complainant has
attempted to confound the panel by arguing that Respondent has a lack of a
legitimate interest in the domain upon this basis.
Respondent
has legitimately used his domain by offering a bona fide service that allows users to exercise their fair use
rights under the DMCA. Respondent has
used Complainant’s name only in a nominative sense, recognized as a fair use by
both the NAF and WIPO. Furthermore,
Respondent has drawn a clear and distinctive line between his products and the
products of the Complainant by displaying a disclaimer on his website and by
requiring users to gather URLs from the Complainant’s website. Therefore, Respondent has rights and
legitimate interests in his domain name.
Respondent contends that it has not registered or used its domain name in bad faith. Respondent did not register his domain name with the intent to prevent Complainant from using its mark. Respondent has exhibited a nominative fair use of Complainant’s mark to indicate his target audience. Respondent has not registered his domain for the purposes of disrupting Complainant’s business, as Respondent’s own business is ancillary to Complainant’s video services. Respondent has taken adequate steps to disavow association with Complainant’s business, and Respondent has posted a disclaimer on his website to prevent any potential or actual confusion of users.
Complainant contends that the “YouTube” mark was “fanciful and unique” prior to the registration of Respondent’s domain. But Complainant’s trademark application was still pending at this time and, therefore, as previously stated, was insufficient to show legitimate trademark rights in these two generic words. Furthermore, Complainant has failed to show that “YouTube” had acquired a secondary meaning at the time of Respondent’s registration.
Complainant contends that Respondent’s current use of the domain name constitutes bad faith. As previously stated, Respondent’s nominative use has been recognized as a legitimate good faith use by both the NAF and WIPO. In addition, the WIPO Overview of Panel Views has recognized this nominative fair use as the majority view of the WIPO panel decisions. WIPO has recognized that the nominative use of a complainant’s mark to sell goods or services related to that mark is in good faith provided the respondent does not offer products that compete with the complainant’s business, the respondent offers a disclaimer disavowing his association with the complainant’s mark, and the respondent does not attempt to corner the market in domains incorporating the complainant’s mark.
Respondent has met all of these
criteria. Complainant conceded in the
Complaint that Respondent has previously posted a disclaimer disavowing
association between the two parties.
That disclaimer is still posted on Respondent’s website. Respondents video download service does not
compete with Complainant’s video services.
Rather, Respondent relies upon Complainant’s video services for his
business model. Respondent has not
attempted to corner the market in domains that incorporate the Complainant’s
mark. Respondent has many competitors
that incorporate the Complainant’s mark for nominative use in much the same
manner, such as <downloadyoutubevideos.com>,
<saveyoutube.com>, and <youtubez.com>. Respondent has merely registered one domain
that makes nominative use of Complainant’s name.
Respondent has not intended to attract users of YouTube to his domain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent has used considerable caution to make it clear to users that Respondent is not sponsored by or affiliated with YouTube. Respondent’s actions to prevent such confusion are twofold: 1. Respondent has posted a disclaimer on his website clarifying the relationship between his software product and YouTube, and explicitly disavowing any connection between the two entities; and 2. Respondent’s software product requires users to first navigate to YouTube’s website to obtain the URL link to the video that they wish to download, thus explicitly identifying to the user, with clarity, the lack of affiliation between the two sites. Furthermore, Complainant has failed to submit any evidence of actual confusion to support its claims.
Respondent has not registered his domain name with the purpose of disrupting the Complainant’s business. Respondent has absolutely no incentive to disrupt the business of YouTube, as his own business is ancillary to and dependent upon the YouTube service. If anything, Respondent’s software product increases the user base of the YouTube site by giving users more power over the fair use of their media, thus increasing the user’s incentive, in the face of numerous competitors, to frequent the YouTube service. Any contrary argument would be akin to one that asserted that accessories for Apple’s iPod were created with the purpose of disrupting Apple’s iPod sales—an absurd result.
Finally, Respondent has not registered the <youtubex.com> domain name to prevent Complainant from using its mark. Respondent has merely made nominative use of Complainant’s mark to describe its services to its target audience, a good faith fair use recognized by both the NAF and WIPO.
Therefore,
Respondent did not register his domain in bad faith.
In its additional submission,
Complainant contends that it has amply established that its trademark rights
are well prior to registration of the domain name, both because of its earlier
common-law rights (which Respondent does not contest) and due to the foreign
registrations with priority dates prior to the registration of <youtubex.com> on April 4, 2006.
In addition, Complainant's
Respondent
also attacks the strength of Complainant's mark, arguing at length about the
meanings of "you" and "tube" standing alone. Respondent
fails to address the Mark as a whole, which is inherently distinctive.
Respondent has presented no evidence that the unitary mark YOUTUBE is in any
way descriptive or generic. There is none, and the mark is inherently
distinctive. To the extent that secondary meaning is found to be necessary,
which Complainant strongly disagrees with, Complainant has also presented ample
evidence through brand surveys and media coverage showing that the YOUTUBE mark
is and has been among the most famous and popular brands in the world, clearly
demonstrating secondary meaning well before registration of the Domain Name in
April 2006.
Finally,
Respondent's own "fair use" arguments contradict its claims that the
YOUTUBE mark is not distinctive. Respondent claims, for example, that his
services are an "ancillary software product and website" and are
"companion goods or services" intended to "identify Respondent's
products as working in conjunction with Complainant's video services. Inherent
in these assertions is a claim that consumers recognize the YOUTUBE Mark in
connection with the YouTube Services, which in turn demonstrates the
distinctiveness of the YOUTUBE mark.
Respondent
has argued that the Domain Name is not confusingly similar to the YOUTUBE mark.
The addition of the letter "x" does not prevent the Domain Name from
being confusingly similar to the mark. In any event prior panels have
repeatedly held that a domain name that wholly incorporates a Complainant's
mark is sufficient to establish identity or confusing similarity for purposes
of the Policy despite the addition of other words, even if the words added
directly describe the product.
Contrary
to Respondent's contentions, the Domain Name is not a "nominative fair
use." Under the "nominative fair use" test, as adopted in some
federal circuits in the
Panel decisions have repeatedly
held that use of a domain name "that is confusingly similar to
Complainant's mark is not reasonably necessary for Respondent to resell"
products. Had Respondent
picked a unique and non-confusing domain name, he could use the YOUTUBE mark in
the text of a website as reasonably necessary to refer to Complainant's
services, but he in no way needs to use Complainant's mark in the Domain Name
to identify his own competitive services.
The site at the Domain Name also uses Complainant's mark far more than the reasonably necessary to refer to Google's services. For instance, the <youtubex.com> website prominently features the YOUTUBE logo and screenshots of Complainant's YouTube services, enough by itself to eliminate a nominative fair use claim, even if one existed on the facts here.
Respondent's widespread use of the YOUTUBE mark,
the YOUTUBE logo, and screenshots of the website at <youtube.com> all
create the legitimate inference that Respondent has some connection with
Complainant, for all the reasons discussed above, and constitutes a third
independent ground why Respondent's "nominative fair use" argument
must fail. As noted above, a small disclaimer is insufficient to avoid confusion
given the likelihood of initial interest confusion, and due to Respondent's
provision of services that are competitive or closely related to Complainant's
own.
Furthermore
the website at the Domain Name offers video display, tagging, and sharing
services that are directly competitive with Complainant's own services offered
under its YOUTUBE mark.
Even
if the "services are not directly competitive, they are unquestionably
complementary to each other and very closely related at that, so much so that
users could reasonably, realistically and readily think that both services emanate
from the Complainant.”
Respondent
argues that he does not wish to "disrupt" Complainant's business, as
his service rides on the goodwill of Complainant. Respondent's assertion of a
benign intent simply does not eliminate his bad faith in connection with the
use and registration of the Domain Name.
Panel
decisions have repeatedly held that use of Complainant's logo on the
Respondent's website, as Respondent admits to here, is further evidence of bad
faith registration and use.
Finally,
the presence of a small disclaimer is entirely insufficient to remedy consumer
confusion caused by Respondent's bad faith registration and use of the domain
Name. Indeed, the disclaimer merely emphasizes that the Domain Name was
registered and used with full knowledge of Complainant's trademark rights.
FINDINGS
The Panel finds that:
1.
The
Domain Name <youtubex.com> is confusingly
similar to the Complainant’s marks;
2.
Respondent
has not established any right or legitimate interest in the Domain Name <youtubex.com>; and
3. Respondent has registered and is using the Domain Name <youtubex.com
> in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant asserts rights in the YOUTUBE mark through its continuous and extensive use of the mark since February 14, 2005 and through its registration of the mark with the World Intellectual Property Organization (Reg. No. 897,049 issued March 1, 2006). The Panel finds that this sufficiently establishes Complainant’s rights in the YOUTUBE mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
The <youtubex.com> domain name uses the entire YOUTUBE mark, adds the letter “x” onto the end of the mark, and includes the generic top-level domain “.com.” The Panel finds that the disputed domain name is thus confusingly similar to Complainant’s YOUTUBE mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
While Respondent contends that the <youtubex.com> domain name is comprised of common, descriptive terms
and as such cannot be found to be confusingly similar to Complainant’s
mark, the Panel finds that such a determination is not necessary under Policy ¶
4(a)(i) as this portion of the Policy considers only whether Complainant has
rights in the mark and whether the disputed domain name is identical or
confusingly similar to Complainant’s mark.
See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs., FA 915206 (Nat.
Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual
word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
Respondent further contends that Complainant, Google
Inc., had no rights in the YOUTUBE mark at the time Respondent registered the <youtubex.com> domain name on
April 4, 2006. However, Complainant
provides evidence of its acquisition of YouTube in November 2006 and its
assignment of all rights in the YOUTUBE mark.
The Complainant must show that the Respondent has no rights or
legitimate interests in respect of the disputed domain name. The Respondent
does not assume the burden of proof, but may establish a right or legitimate
interest in a disputed domain name by demonstrating in accordance with
paragraph 4(c) of the Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services prior
to the dispute;
(b) He is commonly
known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions, this Panel also takes the position that, while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techns., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Cont’l Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s WHOIS information indicates
that Respondent is “David Miller” and Complainant contends that Respondent is
not authorized to use the YOUTUBE mark for any purpose. The Panel finds that Respondent is not
commonly known by the <youtubex.com>
domain name and thus lacks rights and legitimate interests pursuant to
Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
Complainant alleges that the <youtubex.com> domain name
diverts Internet users to a commercial website that features Complainant’s
YOUTUBE mark and logo and allows users to download and save video clips
provided by third party websites, including Complainant’s video sharing
website, YouTube, located at the <youtube.com> domain name. Complainant contends that this service
directly violates YouTube’s terms of use, which expressly prohibits downloading
and saving videos from the YouTube website.
The Panel is of the view that such use does 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 Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also U.S. Franchise Sys., Inc. v. Howell, FA
152457 (Nat. Arb. Forum May 6, 2003) (holding
that the respondent’s use of the complainant’s mark and the goodwill
surrounding that mark as a means of attracting Internet users to an unrelated
business was not a bona fide offering of goods or services).
Complainant further contends that
Respondent’s inclusion of a disclaimer on its website that resolves from the <youtubex.com> domain name is
insufficient to establish rights and legitimate interests. The Panel finds that Respondent’s addition of
a disclaimer does not support a finding that Respondent has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See
DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000)
(finding that addition of a disclaimer, when the domain name consists of the
complainant’s well-known trademark, does not counter the expectation of
Internet users that the domain name is sponsored by the complainant); see also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying
the conclusion that the respondent wishes to trade on the fame of the
complainant’s trademark, regardless of the presence of a small-print disclaimer
that is unavailable to Internet users until they have already entered the
gambling site, because the disclaimer fails to remedy initial confusion).
Complainant alleges that Respondent is using the <youtubex.com> domain name, which is confusingly similar to Complainant’s YOUTUBE mark, to offer services directly related to Complainant’s YouTube services, but in violation of YouTube’s terms of service. The Panel finds that Respondent is attempting to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with the <youtubex.com> domain name and Respondent’s corresponding website. The Panel is of the view that this indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Furthermore, Complainant
contends Respondent’s inclusion of a disclaimer on the website that resolves
from the <youtubex.com> domain
name does not overcome the initial confusion created by the disputed domain
name. The Panel finds that, under Policy
¶ 4(a)(iii), Respondent’s disclaimer does not mitigate
any bad faith registration and use on the part of Respondent. See
Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid
a finding of bad faith. First, the
disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel
initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation
of Complainant’s rights.”); see also Thomas & Betts Int’l, Inc. v. Power
Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based
upon initial interest confusion despite disclaimer and link to the
complainant’s website on the respondent’s website).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubex.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: October 24, 2007
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