Google Inc. v. chenguoqiang
Claim Number: FA1504001615372
Complainant is Google Inc. (“Complainant”), represented by Denis V. Shamo of Dickinson Wright PLLC, Washington, D.C., USA. Respondent is chenguoqiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inyoutube.com>, registered with eName Technology Co.,Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2015; the Forum received payment on April 20, 2015.
On April 20, 2015, eName Technology Co.,Ltd. confirmed by e-mail to the Forum that the <inyoutube.com> domain name is registered with eName Technology Co.,Ltd. and that Respondent is the current registrant of the name. eName Technology Co.,Ltd. has verified that Respondent is bound by the eName Technology Co.,Ltd. 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 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2015 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@inyoutube.com. Also on April 27, 2015, 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 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
(i) Complainant owns the YOUTUBE mark through registration with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 897,049, registered March 1, 2006). Complainant uses the YOUTUBE mark in connection with its digital content distribution service. The <inyoutube.com> domain name is confusingly similar to the YOUTUBE mark. The domain name incorporates the mark in full, adds the letters “in”, and adds the generic top-level domain (“gTLD”) “.com.”
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor by Complainant’s YOUTUBE mark. Respondent’s WHOIS information does not identify that the Respondent is commonly known by the <inyoutube.com> name. Further, Respondent is not authorized by Complainant to use Complainant’s mark, nor register the disputed domain name. Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website that seeks to distribute malware, redirects unsuspecting Internet users to third-party websites used to “phish” for personal information, and displays hyperlinks which reroute users to third-party websites for commercial gain. See Compl., at Attached Exs. 11–14.
(iii) Respondent has engaged in bad faith registration and use of the <inyoutube.com> domain name pursuant to Policy ¶ 4(a)(iii). Respondent’s use of the disputed domain name disrupts Complainant’s business and therefore qualifies as bad faith under Policy ¶ 4(b)(iii). Additionally, Respondent’s website features advertisements and third-party links, which demonstrates that Respondent seeks to commercially benefit from the likelihood of confusion with Complainant’s mark. Respondent’s website features a phishing scheme and distributes malware, which further illustrates Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). Finally, Respondent registered the disputed domain name with knowledge of Complainant’s rights to the YOUTUBE mark, which establishes further evidence of bad faith registration under Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a Response for the Panel’s consideration. The disputed domain name was registered on July 21, 2010.
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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(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.”).
Complainant asserts that it owns the YOUTUBE mark through registration with the SAIC (e.g., Reg. No. 897,049, registered March 1, 2006). Complainant states that it uses the YOUTUBE mark in connection with its digital content distribution service. The Panel concludes that Complainant’s valid registration of the YOUTUBE mark with the SAIC sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues that the <inyoutube.com> domain name is confusingly similar to Complainant’s YOUTUBE mark. The domain name incorporates the mark in full, adds the letters “in”, and adds the gTLD “.com.” Prior panels have found that simply adding two characters to an otherwise incorporated mark does not adequately distinguish the disputed domain name from the mark. See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”). Furthermore, the addition of a gTLD has been viewed as irrelevant in confusing similarity analysis by past panels. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel determines that such modifications to the YOUTUBE mark do not distinguish the disputed domain name from the incorporated mark, and therefore finds confusing similarity under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name nor by Complainant’s YOUTUBE mark. Specifically, Complainant asserts that Respondent’s WHOIS information does not identify that the Respondent is commonly known by the <inyoutube.com> name. The Panel notes that the WHOIS information for the disputed domain name lists “chenguoqiang” as the registrant of record. See Compl., at Attached Ex. 4. Further, Complainant contends that Respondent is not authorized by Complainant to use Complainant’s mark, nor register the disputed domain name. The Panel determines there is no basis to find that Respondent is commonly known by the disputed <inyoutube.com> domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Further, Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant alleges that Respondent’s disputed domain name resolves to a website that distributes malware and displays hyperlinks which reroute users to third-party websites for commercial gain. See Compl., at Attached Exs. 12–14. Previous panels have found that disputed domain names that are used in connection with malware and commercial hyperlinks are neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name); see also EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (holding that the respondent’s website usage of pay-per-click links was a bona fide offering of goods and services). Thus, the Panel agrees that Respondent lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name under Policies ¶¶ 4(c)(i) or 4(c)(iii).
Further, Complainant contends that Respondent’s resolving website redirects unsuspecting Internet users to third-party websites that attempt to phish for personal information. Complainant demonstrates in its Attached Exhibit 11 that one of the landing websites displays a fraudulent offer to earn “exclusive rewards” in exchange for visitor’s personal information. Previous panels have found that such use of a disputed domain name is evidence that a respondent lacks rights or legitimate interests in the disputed domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s attempt to phish for Internet users’ personal information is further evidence that Respondent lacks either a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business and therefore qualifies as bad faith under Policy ¶ 4(b)(iii). Complainant asserts that Respondent’s use of the disputed domain, which redirects users to various third-party websites, delays or impedes Complainant’s legitimate customers from finding Complainant’s products and services. Previous panels have held that such use indicates a respondent’s bad faith. Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel finds that Respondent has engaged in bad faith use pursuant to Policy ¶ 4(b)(iii).
Additionally, Complainant claims that Respondent’s website features advertisements and third-party links, which demonstrates that Respondent seeks to commercially benefit from the likelihood of confusion with Complainant’s mark. Complainant asserts that Respondent presumably seeks to collect click-through advertising revenue, and prior panels have found that such conduct demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel determines that Complainant’s contentions sufficiently demonstrate Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant further asserts that Respondent’s website features a phishing scheme, which illustrates Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). Complainant claims that unsuspecting Internet users might be misled by Respondent’s prize offer, and by participating in the scheme, might unwittingly share personal information with Respondent. Previous panels have found that phishing for users’ personal information constitutes bad faith use. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Therefore, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent’s website attempts to distribute malware, which is indicative of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). The Panel recalls that Complainant has included a screen grab of the resolving pages that feature various warnings to download software or seek customer support, which are presumably connected to malware. See Compl., at Attached Ex. 12–14. The Panel agrees that Respondent’s use of the disputed domain name in furtherance of malicious software evinces Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith).
Finally, Complainant claims that Respondent registered the disputed domain name with knowledge of Complainant’s rights to the YOUTUBE mark, which establishes further evidence of bad faith registration under Policy ¶ 4(a)(iii). Complainant contends that, given the fame of Complainant’s YOUTUBE marks and its trademark filings, it is inconceivable that Respondent created the disputed domain name without knowledge of Complainant’s rights in the mark. Further, Complainant argues that the coined term “YouTube” has no meaning other than as Complainant’s trademark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <inyoutube.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 3, 2015
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