Google Inc. v. IAI
Claim Number: FA0906001266305
Complainant is Google
Inc. (“Complainant”), represented by Hoang-chi
Truong, of Fenwick & West LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <youtubeislam.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 4, 2009.
On June 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <youtubeislam.com> domain name is registered with Godaddy.com, Inc. and that 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 June 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 1, 2009 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@youtubeislam.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <youtubeislam.com> domain name is confusingly similar to Complainant’s YOUTUBE mark.
2. Respondent does not have any rights or legitimate interests in the <youtubeislam.com> domain name.
3. Respondent registered and used the <youtubeislam.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Google Inc., is the owner of the YOUTUBE mark,
registered with the United States Patent and Trademark Office (i.e., Reg. No. 3,525,802 issued October 28,
2008) and other governmental trademark authorities worldwide. Complainant has used its YOUTUBE mark
continuously since the launch of its corresponding website, <youtube.com>,
on February 15, 2005. Complainant uses
its YOUTUBE mark to provide online video services through the use of a website
where users can upload, share, and watch original videos.
Respondent
registered the <youtubeislam.com> domain name on January 27,
2007. The disputed domain name resolves
to a website where Respondent allows users to upload and view videos and
information about the Islamic faith. The
disputed domain name’s resolving website copies the look and feel of
Complainant’s website, including the use of tabs for different parts of its
website such as “Home,” “Channels,” and “Community,” which are identical to
those on Complainant‘s <youtube.com> domain name and resolving
website.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has established rights in
the YOUTUBE mark for purposes of
Policy ¶ 4(a)(i) through its trademark registration
with the USPTO. See Enter. Rent-A-Car Co. v. David Mizer
Enters., Inc., FA 622122
(Nat. Arb. Forum Apr. 14, 2006) (finding that the
complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and
ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of
demonstrating rights in the mark under consideration pursuant to Policy ¶
4(a)(i)); see
also Paisley Park
Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that
the complainant had established rights in the PAISLEY PARK mark under Policy ¶
4(a)(i) through registration of the mark with the USPTO).
Prior to Respondent’s registration of the disputed domain name, Complainant did not possess a trademark registration for its YOUTUBE mark. However, Complainant argues that it has common law rights in its YOUTUBE mark predating Respondent’s registration of the disputed domain name. If Complainant can demonstrate adequate common law rights in the mark, the Panel finds that this is sufficient for the purposes of a Policy ¶ 4(a)(i) analysis. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant contends that the
first use of its YOUTUBE mark in
commerce occurred on February 15, 2005 when its corresponding website was
launched and the mark has since acquired substantial, valuable secondary
meaning. Complainant has demonstrated
continuous use of its YOUTUBE mark in print, advertising, marketing, and news
articles since 2005, more than two years prior to Respondent’s registration of
the disputed domain name. Therefore, the Panel finds that Complainant has
sufficiently established common law rights in its YOUTUBE mark prior to
Respondent’s registration of the disputed domain name. See
Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat.
Arb. Forum Dec. 19, 2005) (finding that the complainant established common law
rights in the STELLAR CALL CENTRES mark because the complainant demonstrated
that its mark had acquired secondary meaning); see also Toyota Sunnyvale v.
Adfero Publ’g Co., FA 921194
(Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA
SUNNYVALE mark had acquired secondary meaning sufficient for it to establish
common law rights in the mark through continuous and extensive use of the mark
since 2003 in connection with a car dealership under that mark).
Respondent’s <youtubeislam.com> domain name contains Complainant’s YOUTUBE mark in its entirety with the addition of the generic term “Islam” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the generic term “Islam,” referring to the Muslim religion, fails to adequately distinguish Respondent’s disputed domain name from Complainant’s YOUTUBE mark. Furthermore, the addition of the gTLD “.com” is insignificant for the purposes of a Policy ¶ 4(a)(i) analysis. Thus, the Panel concludes that Respondent’s <youtubeislam.com> domain name is confusingly similar to Complainant’s YOUTUBE mark pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. Atchan, FA 164305 (Nat. Arb. Forum July 25, 2003) (“Neither Respondent’s variation of the generic top-level domains nor the addition of the descriptive word “Islamic” to Complainant’s mark is sufficient to prevent the Panel from finding that the disputed domain names are confusingly similar to Complainant’s mark.”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or
legitimate interests in the <youtubeislam.com> domain name.
For the purposes of a Policy ¶ 4(a)(ii)
analysis, Complainant must meet its burden of production for its prima facie case, and then the burden
shifts to Respondent. Respondent must
bring themselves within the purview of Policy ¶ 4(c), or put forward some other
reason why it can fairly be said to have relevant rights or legitimate
interests in relation to the disputed domain name. Complainant has presented a prima facie case and the Panel will
review the record to determine whether Respondent has any rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c). See
Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”).
Respondent’s <youtubeislam.com> domain name resolves to a website where Internet users can upload, share, and view original videos about the Islamic faith. Complainant contends that Respondent is using a confusingly similar domain name to divert Internet users to Respondent’s website, promoting Respondent’s own services for financial gain. The Panel thus finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. 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 Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Furthermore, Complainant contends that Respondent is not
authorized to use its YOUTUBE mark and that Respondent is not commonly known by
the disputed domain name. The WHOIS
information lists the registrant as “IAI.” This information, taken together with other
evidence in the record, suggests that Respondent is not commonly known by the <youtubeislam.com>
domain name under Policy ¶ 4(c)(ii), and the Panel so
finds. See Braun Corp. v. Loney, FA
699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent
was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not commonly
known by the <coppertown.com> domain name where there was no evidence in
the record, including the WHOIS information, suggesting that the respondent was
commonly known by the disputed domain name).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is using the <youtubeislam.com> domain name to attract Internet users to Respondent’s competing website. The Panel finds that Respondent’s misappropriation of Complainant’s YOUTUBE mark to divert Internet users likely disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant contends that Respondent is using the disputed domain name to take advantage of the recognition associated with Complainant’s YOUTUBE mark by diverting Internet users to Respondent’s website offering similar video-sharing capabilities. Respondent has appropriated Complainant’s YOUTUBE mark, creating a likelihood of confusion, to promote its services for its own commercial gain. The Panel concludes that Respondent’s utilization of Complainant’s YOUTUBE mark is intended to attract Internet users and the Panel further infers that Respondent is profiting from such use. Thus, the Panel finds that Respondent has engaged in bad faith registration and use of the <youtubeislam.com> domain name under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <youtubeislam.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: July 22, 2009
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