Google LLC v. Domain Manager
Claim Number: FA1710001755084
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Domain Manager (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <listentoyoutube.com>, registered with GoDaddy.com, LLC.
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.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2017; the Forum received payment on October 23, 2017.
On October 24, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <listentoyoutube.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2017 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@listentoyoutube.com. Also on October 26, 2017, 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.
A timely Response was received and determined to be complete on November 14, 2017.
The file was put under a stay of proceedings under the UDRP rules at the joint request of both parties, on November 16, 2017. The stay of the administrative proceedings was removed on January 2nd, 2018 at the request of Complainant.
Both parties, submitted Additional Submissions in a timely manner according to the Forum's Supplemental Rule #7.
On January 4th, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Parties’ Contentions
Complainant contends that:
- It acquired the digital content distribution service, YouTube, Inc., in 2007
- It uses its YOUTUBE mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,525,803, registered Oct. 28, 2008).
- Respondent’s <listentoyoutube.com> is confusingly similar to Complainant’s mark because it adds the generic terms “listen” and “to” and appends the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
- Respondent does not have rights or legitimate interests in the disputed domain name.
- Complainant has not licensed or otherwise authorized Respondent to use its mark in any manner, and Respondent is not commonly known by the disputed domain name.
- Respondent also fails to use the <listentoyoutube.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the resolving website in direct violation of Complainant’s Terms of Service by enabling Internet users to download and save content from Complainant’s YouTube website.
- Additionally, the resolving website features pay-per-click advertising unrelated to Complainant that Respondent most likely commercially benefits from. Finally, Respondent uses the website to falsely suggest that it is affiliated with Complainant’s YouTube business.
- Respondent registered and is using the disputed domain name in bad faith. Respondent uses Complainant’s entire mark to attract Internet users and commercially benefit by creating confusion as to the source, sponsorship affiliation or endorsement of Respondent’s website.
- Additionally, Respondent uses the resolving website to feature pay-per-click advertising and enables Internet users to violate Complainant’s YouTube Terms of Service.
- Finally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark at the time of registration.
By its Response, Respondent replies that:
- Respondent registered its <listentoyoutube.com> domain name on April 8, 2008. Respondent’s <listentoyoutube.com> domain name is not confusingly similar to Complainant’s YOUTUBE mark because the name describes the function of the site.
- Respondent has established rights and interests in the <listentoyoutube.com> domain name because there is a clear and reasonable Verb + Noun search component in the name and because there is no reasonable way to differentiate between verb driven searches and brand searches.
- it is known by the domain name due to its high returning visitor rate within the last year. Respondent uses the <listentoyoutube.com> domain name in connection with a bona fide service because the domain name describes the function of the domain name’s resolving website and because the website features disclaimers that inform Internet users that it is not affiliated with Complainant Google or Complainant’s <youtube.com> domain name.
- Respondent did not register the <listentoyoutube.com> domain name in bad faith because it did not have an intent to deceive. The <listentoyoutube.com> domain name resolves to a website that does not feature Complainant’s logo, colors or functions that are similar to those offered on Complainant’s <youtube.com> site.
- Further, the website offers a service that directs every visitor to Complainant’s website first. Additionally, when the term “youtube” is entered into Complainant Google’s own search engine, Respondent’s <listentoyoutube.com> domain name does not appear within the first three pages of results.
C. Additional Submissions
Complainant filed additional submissions on 3rd of January 2018, in a timely manner according to the Forum's Supplemental Rule #7. By its additional submissions, Complainant further develops its arguments under the three elements of the Policy, while rebutting the assertions of Respondent.
In response, Respondent filed additional submissions on January 8th, 2017 in a timely manner according to the Forum's Supplemental Rule #7. By these Additional Submissions, Respondent maintains its arguments provided in the initial Response, stating that the three elements under the Policy are just not proven by the Claimant.
Respondent registered and uses in bad faith a domain name which incorporates one of the trademarks on internet YOUTUBE, which belongs to Complainant.
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.
Complainant contends it registered its YOUTUBE mark with the USPTO (e.g., Reg. No. 3,525,803, registered Oct. 28, 2008). See Compl. Annex 10. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). As such, the Panel hold that Complainant has rights in the YOUTUBE mark.
Moreover, Complainant argues that Respondent’s <listentoyoutube.com> is confusingly similar to Complainant’s mark because it prepends the generic terms “listen” and “to” and appends the gTLD “.com” to the fully incorporated mark. On its side, Respondent replies that the <listentoyoutube.com> domain name is not confusingly similar to Complainant’s YOUTUBE mark because the name describes the function of the site. Respondent argues that because the domain name features a verb followed by a noun, the domain name merely describes the resolving website and cannot be considered confusingly similar to Complainant’s mark.
This Panel considers that there is no support for
Respondent’s conclusions on this matter, as the Policy does not distinguish for
identity or confusing similarity purpose between different verbal components in
the disputed domain name. There is a long established
practice under UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions,
Third Edition
(“WIPO Jurisprudential Overview 3.0”) that the standing test for confusing similarity involves a reasoned and
relatively straightforward comparison between Complainant’s trademark and the
disputed domain name and in cases where a domain name incorporates the entirety
of a trademark, or where at least a dominant feature of the relevant mark is
recognizable in the domain name, the domain name will normally be considered
confusingly similar to that mark for purposes of UDRP standing. Therefore,
the Panel concludes that Respondent has not proven that its <listentoyoutube.com>
domain name is not confusingly similar to Complainant’s YOUTUBE mark. The addition of a generic term and gTLD do not
negate confusing similarity between a mark and a disputed domain name. Marquette Golf Club v. Al
Perkins, FA 1738263 (Forum July 27, 2017) (“When
a respondent’s domain name incorporates a mark in its entirety and merely adds
a generic top-level domain (gTLD), “.com”, then the Panel may find that the
disputed domain name is identical to Complainant’s mark.”).
Therefore, the Panel holds that the disputed domain name is confusingly similar to Complainant’s mark and Complainant has proven the first element of the Policy.
Under the Policy ¶ 4(a)(ii, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (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 does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its YOUTUBE mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, Respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that Respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as Respondent was not authorized to register domain names featuring Complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. 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, Respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <listentoyoutube.com> lists “Domain Manager” as the registrant. See Compl. Annex 13.
On its side, Respondent contends that it has established rights and interests in the <listentoyoutube.com> domain name because it is commonly known by the domain name. Respondent contends that its 66% returning visitor rate over the past 12 months is a strong indication that Respondent is known by the domain name. See Resp. Annex Item 6. Respondent, however, does not offer support for its conclusion that evidence of returning visitors to a disputed domain name’s website is indicative of a respondent being commonly known by that domain name. Therefore, the Panel holds that Respondent has not proven rights or legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name.
Next, Complainant contends that Respondent has failed to use the <listentoyoutube.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant alleges that Respondent uses the resolving website in direct violation of Complainant’s Terms of Service by enabling Internet users to download and save content from Complainant’s YouTube website. Use of a domain name to enable Internet users to download and save content from a complainant’s site in violation a complainant’s terms of services is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the <10youtube.com> domain name in association 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 Service did 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 also Google Inc. v David Miller, FA1067791 (Forum Oct. 24, 2007) (finding that respondent’s use of the <youtubex.com> domain name in association with a website that enabled Internet users to download and save video clips from Google’s YouTube service in violation of Google’s YouTube Terms of Service did 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)). Complainant asserts that screenshots Complainant provides indicate that Respondent’s website is used to enable Internet users to download and save videos from Complainant’s YouTube website and features instructions such as “How To: Extract MP3 From a YouTube Video.” See Compl. Annex 11.
On its side, Respondent argues that it has rights and legitimate interests in the <listentoyoutube.com> domain name because there is a clear and reasonable “verb + noun” search component in the domain name and because there is no reasonable way to differentiate between verb driven searches and brand searches. Panel finds that, it cannot assess the bona fide of Respondent in using the disputed domain name based on the absence of a reasonable way to differentiate between driven searches. If the incorporation of Complainant’s trademark is the dominant driven search this should have not been disregarded by Respondent at the registration and use of the disputed domain name.
Respondent further argues it has rights and legitimate interests in the disputed domain name because the resolving website features a disclaimer informing Internet users of its lack of affiliation with Complainant Google or Complainant’s <youtube.com> domain name. See Resp. Annex Item 3. The Panel notes in this regard that the mere existence of a disclaimer on a webpage may not be sufficient to confer rights and legitimate interests in a disputed domain name. See AltaVista Co. v. AltaVisa, FA 95480 (Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name).
Additionally, Respondent contends it is using the <listentoyoutube.com> domain name in connection with a bona fide service because the domain name describes the function of the domain name’s resolving website. Here, Respondent asserts Respondent’s website features a service whereby visitors may strip sound from digital content on Complainant’s <youtube.com> site for the purpose of listening to the audio. The Panel cannot infer a bona fide use of the disputed domain name, as the disputed domain name fully incorporates Complainant ‘s trademark, which is a well -known trademark together with some descriptive generic terms added by Respondent to form the disputed domain name. A user could easily infer a false association with Complainant and its services. Moreover, the Panel agrees with Complainant’s allegations that Respondent uses the confusingly similar domain name to create a false association with Complainant to attract internet users to its own website to ultimately profit from pay-per-click advertising featured on the website. Use of a domain name to display pay-per-click advertisements is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). As such, the Panel concludes that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Concluding, this Panel finds that Complainant has proven the second element of the Policy.
Complainant asserts that Respondent attempts to attract Internet users and commercially benefit from the goodwill of the YOUTUBE mark by featuring Complainant’s mark and unrelated pay-per-click hyperlinks on its resolving website. Appropriating a complainant’s mark in a confusingly similar domain name to create confusion as to the source, sponsorship, affiliation or endorsement of a respondent’s website for respondent’s commercial gain is evidence of bad faith registration and use. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that Respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to Complainant’s business, through which Respondent presumably commercially gained). Complainant contends the screenshots provided by Complainant show that Respondent’s resolving website featured Complainant’s YOUTUBE mark numerous times and displayed advertisements for unrelated services. See Compl. Annex 11.
Respondent argues that under Policy ¶ 4(b)(iv), Complainant has failed to show that Respondent caused a likelihood of confusion because the resolving website does not feature Complainant’s logo or the layout or colors of Complainant’s <youtube.com> website, or services found on Complainant’s <youtube.com> website. See Resp. Annex Items 3-4. Moreover, Respondent also contends that its <listentoyoutube.com> domain name and resolving website do not compete with Complainant’s business. Respondent alleges that Internet users are not diverted from Complainant’s website because when the term “youtube” is entered into Complainant Google’s own search engine, Respondent’s <listentoyoutube.com> domain name does not appear within the first three pages of results. See Resp. Annex Item 5. The Panel does not agree with Respondent’s allegation under this point and finds, under the balance of probabilities that Respondent likely intended to deceive Internet users by causing a likelihood of confusion between the disputed domain name and Complainant’s mark, by incorporating it in the disputed domain name. As mentioned under element 2, this Panel is of the opinion that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer. See AltaVista Co. v. AltaVisa, FA 95480 (Forum Oct. 31, 2000)
Next, Complainant asserts that the <listentoyoutube.com> resolving website enables Internet users to violate Complainant’s YouTube Terms of Service. Use of a domain name to enable Internet users to violate a complainant’s terms of service agreement by downloading and saving content from a complainant’s website is evidence of bad faith registration and use. See Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding use of the <10youtube.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); see also Google Inc. v David Miller, FA1067791 (Forum Oct. 24, 2007) (finding use of the <youtubex.com> domain name in association with a website that enabled download of video clips from Google’s YouTube website in violation of Google’s YouTube Terms of Service to constitute bad faith use and registration under the Policy). Here, Complainant asserts screenshots of Respondent’s website show that the site is used to aid Internet users violating Complainant’s YOUTUBE Terms of Service. See Compl. Ex. 11. Accordingly, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark at the time of registration. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant asserts Complainant’s YOUTUBE mark has created significant good will and consumer recognition around the world and has been ranked among the top ten U.S. Web Brands. See Compl. Annex 9. Therefore, the Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s rights when <listentoyoutube.com> was registered and subsequently used.
In conclusion, the Panel holds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(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 <listentoyoutube.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka - Panelist
Dated: January 18th, 2018
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