Google Inc. v. Idan Feigenbaum / SpeedBit Ltd.
Claim Number: FA1603001666993
Complainant is Google Inc. (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, California, United States of America. Respondent is Idan Feigenbaum / SpeedBit Ltd. (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtubeaccelerator.com>, <ytaccelerator.com>, and <www-youtubeaccelerator.com> registered with Godaddy.Com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2016; the Forum received payment on March 22, 2016.
On March 23, 2016, the <youtubeaccelerator.com> domain name was confirmed by email to the Forum by Godaddy.com, LLC and then on March 29, 2016, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <ytaccelerator.com> and <www-youtubeaccelerator.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. 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 March 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2016 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@youtubeaccelerator.com, postmaster@ytaccelerator.com, postmaster@www-youtubeaccelerator.com. Also on March 31, 2016, 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 April 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the YOUTUBE mark in connection with the marketing of its user-uploaded video content.
Complainant holds a registration for the YOUTUBE trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,525,802, registered October 28, 2008.
Respondent registered the domain name <youtubeaccelerator.com> on May 14, 2009, the domain name <ytaccelerator.com> on May 9, 2013, and the domain name <www-youtubeaccelerator.com> on July 3, 2014.
The domain names are confusingly similar to Complainant’s YOUTUBE mark.
Respondent has not been commonly known by any of the domain names.
Respondent is not endorsed by or affiliated with Complainant, and Complainant has not authorized Respondent to register or use any of the domain names.
Respondent is not making a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain names.
In its employment of the domain names, Respondent is attempting to pass itself off as Complainant by copying the overall look and feel of Complainant’s <youtube.com> website to capitalize on Internet user confusion, presumably for its commercial gain.
Moreover, the program made available through Respondent’s resolving website tracks user activity and downloads malware.
Respondent’s use of the domain names disrupts Complainant’s business.
Owing to the fame and notoriety of the YOUTUBE mark, Respondent could not have registered the domain names without actual knowledge of Complainant’s rights in that mark.
Respondent registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names have been registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the YOUTUBE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Israel). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010):
the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of the disputed domain names is confusingly similar to Complainant’s YOUTUBE mark. The <youtubeaccelerator.com> and <www-youtubeaccelerator.com> domain names incorporate the YOUTUBE mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.com,” the generic term “accelerator,” and, in one instance, the “www” prefix and a hyphen. The third domain name, <ytaccelerator.com>, contains “yt,” a common abbreviation for YOUTUBE, plus the gTLD “.com” and the generic term “accelerator.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Successful Money Mgmt. Seminars, Inc. v. Fin. Servs. of Cal., FA 95042 (Nat. Arb. Forum July 31, 2000) (finding confusing similarity where “[t]he domain name www.FSSR.com is identical to one of the Complainant’s federally registered trademarks. Moreover, it is confusingly similar to the registered logo and non-acronym version of the registered trademark…”).
See also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Nat. Arb. Forum Jan. 22, 2016), finding, under Policy ¶ 4(a)(i), that the addition of a generic term and a gTLD to the mark of another in creating a domain name is insufficient to distinguish that domain name from the mark.
Further see Amazon.com, Inc. v. JJ Domains, FA 514939 (Nat. Arb. Forum September 2, 2005):
…Respondent’s … domain name is confusingly similar to Complainant’s … mark, as the domain name merely adds the prefix “www-” to Complainant’s … mark. Such changes are not enough to overcome the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in any of the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by noting that Complainant contends, and that Respondent does not deny, that Respondent has not been commonly known by any of the domain names <youtubeaccelerator.com>, <www-youtubeaccelerator.com>, or <ytaccelerator.com>. Complainant also asserts, and again Respondent does not deny, that Respondent is not endorsed by or affiliated with Complainant, and that Complainant has not authorized Respondent to register or use any of the disputed domain names. Moreover, the pertinent WHOIS information identifies the registrant of record for each of the domain names only as “Idan Feigenbaum / SpeedBit Ltd,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the contested domain names so as to have acquired rights to or legitimate interests in any of them within the purview of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information listed the registrant of record only as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't,” which did not resemble disputed domain names, and where there was no other evidence in the record to suggest that that respondent was commonly known by the domain names there in dispute).
We next observe that Complainant asserts, without objection from Respondent, that Respondent employs the <youtubeaccelerator.com>, <ytaccelerator.com>, and <www-youtubeaccelerator.com> domain names to support webpages which, for Respondent’s financial gain, attempt to pass off Respondent as Complainant purportedly to offer services related to Complainant’s <youtube.com> webpage. This use of the domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to demonstrate that Respondent has rights to or legitimate interests in any of them as provided in those provisions. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Finally, under this head of the Policy, Complainant contends that Respondent’s use of the domain names includes a program that tracks Internet user activity and downloads malware. This too fails to qualify as either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website that attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <youtubeaccelerator.com>, <www-youtubeaccelerator.com>, and <ytaccelerator.com> domain names, as alleged in the Complaint, disrupts Complainant’s business by its attempt to pass itself off as Complainant. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain names. See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that a respondent’s registration and use of a disputed domain name, which displayed a website virtually identical to a UDRP complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent’s employment of the disputed <youtubeaccelerator.com>, <www-youtubeaccelerator.com>, and <ytaccelerator.com> domain names, each of which is confusingly similar to Complainant’s YOUTUBE mark, is an attempt to profit commercially by taking advantage of Internet users’ confusion as to the possibility of Complainant’s association with the domain names. Under Policy ¶ 4(b)(iv), this is further proof of Respondent’s bad faith in registering and using the domain names. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (finding, under Policy ¶ 4(b)(iv), that a respondent registered and used a domain name in bad faith by diverting Internet users seeking a UDRP complainant’s website to its own website for commercial gain).
We reach the same conclusion on the point of bad faith in registering and using the domain names as to its apparent efforts to use the disputed domain names covertly to inflict malware on unsuspecting Internet users. See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name used to attract Internet users to a website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Finally, it is evident from the evidence that Respondent knew of Complainant and its rights in the YOUTUBE mark when it registered the disputed domain names. This is additional evidence of Respondent’s bad faith in registering the domain names. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was “well-aware” of a UDRP complainant’s mark at the time of its registration of a confusingly similar domain name).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <youtubeaccelerator.com>, <ytaccelerator.com>, and <www-youtubeaccelerator.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 26, 2016
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