Google LLC v. Robert Stabile
Claim Number: FA2012001926977
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Robert Stabile (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtubetomp3dl.com> and <hdyoutubedownloaderfree.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 known conflict in serving as Panelist in this proceeding.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 31, 2020; the Forum received payment on December 31, 2020.
On January 4, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <youtubetomp3dl.com> and <hdyoutubedownloaderfree.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 January 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2021 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@youtubetomp3dl.com, postmaster@hdyoutubedownloaderfree.com. Also on January 7, 2021, 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 February 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Google LLC, is one of the world’s leading information technology companies. Complainant has rights in the YOUTUBE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,525,802, registered Oct. 28, 2008). See Amend. Compl. Ex. 10. Respondent’s <youtubetomp3dl.com> and <hdyoutubedownloaderfree.com> domain names are confusingly similar to Complainant’s YOUTUBE mark, one only differing by the addition of the generic phrase “to mp3 dl” and the “.com” generic top-level domain (“gTLD”). The second domain similarly only adds the generic term “HD” in front of Complainant’s mark, along with the generic terms “downloader”, “free”, and the “.com” gTLD.
Respondent lacks rights and legitimate interests in the <youtubetomp3dl.com> and <hdyoutubedownloaderfree.com> domain names as it is not commonly known by the disputed domain names and is neither an authorized user or licensee of the YOUTUBE mark. Additionally, Respondent does not use the disputed domain names in connection with any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent purports to offer Internet users software that enables them to download and save content from Complainant’s <youtube.com> website.
Respondent registered and uses the <hdyoutubedownloaderfree.com> and <youtubetomp3dl.com> domain names in bad faith. Respondent disrupts Complainant’s business and reaps commercial gain by doing so. Additionally, Respondent’s registration of multiple infringing domains displays a pattern of bad faith registration. Complainant further contends that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the YOUTUBE mark.
B. Respondent
The disputed domain names were registered on October 11, 2012 (<hdyoutubedownloaderfree.com>) and October 16, 2012 (<youtubetomp3dl.com>). See Amended Compl. Annex 4. Respondent, however, failed to submit a Response in this proceeding.
1. Complainant owns registered trademarks for the mark YOUTUBE dating back to 2006. It has trademark registrations in the United States and numerous countries across the globe, each of which are valid and in full force and effect. See Amended Compl. Annex 10.
2. Complaint’s mark is famous and is used to provide one of the most widely used video sharing services globally. Its’ fame pre-dates the registration of the disputed domain names, <hdyoutubedownloaderfree.com> and <youtubetomp3dl.com>, registered by Respondent on October 11, 2012 and October 16, 2012, respectively.
3. The disputed domain names are identical or confusingly similar to the YOUTUBE mark.
4. Complainant has not licensed or otherwise authorized Respondent to use its mark, nor is Respondent commonly known by the mark.
5. Complainant has established that the disputed domain names have been registered and used 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The YOUTUBE mark was created and used by its then-owner YouTube, Inc. in February 2005 for use in connection with a video sharing service. Complainant, Google LLC, acquired the YOUTUBE mark and service in November 2006 and recorded the assignment of the mark in 2007. See Annex 8.
The Complainant’s Mark is famous, and at or around the time of the registration of the disputed domain names “was the number one ‘U.S. Online Video Brand’ with more than 128 million unique views”. See Amend. Compl. at p. 4 (citing Nielsen’s Netratings attached as Annex 9).
Registration of a mark with the USPTO is a valid showing of rights in a mark. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of a number of trademark registrations for the YOUTUBE mark globally, including a certificate of registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,525,802, registered on October 28, 2008). See Amend. Compl. Annex 10.
Respondent’s <youtubetomp3dl.com> and <hdyoutubedownloaderfree.com> domain names are confusingly similar to Complainant’s YOUTUBE mark, only differing by adding the generic words “to” and “mp3”, the letters “dl”, and the “.com” gTLD in the first instance, and adding the words “hd”, “downloader”, and “free” along with the “.com” gTLD in the second. Adding generic or descriptive terms, letters, and a gTLD does not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Google Inc. v. Gintog / Yuriy Gintog, FA 120800145306 (Forum Sept. 21, 2012) (finding that “<youtubedownloader.org> and <youtubeconverter.name> domain names are confusingly similar to Complainant’s YOUTUBE mark under Policy ¶ 4(a)(i).”
Similarly, the Panel finds that the disputed domain names <youtubetomp3dl.com> and <hdyoutubedownloaderfree.com> are confusingly similar to Complainant’s YOUTUBE mark.
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <youtubetomp3dl.com> and <hdyoutubedownloaderfree.com> domain names as it is not commonly known by either disputed domain name and is neither an authorized user or licensee of the YOUTUBE mark. When no response is submitted, relevant WHOIS information may be used to demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Here, the WHOIS information on record shows that the registrant of the disputed domain names utilized a privacy service when registering the disputed domains. See Amend. Compl. Ex. 4. However, the registrar has identified the registrant of the disputed domain as “Robert Stabile.” See Amend. Compl. Ex. 15. Therefore, the Panel may find Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <youtubetomp3dl.com> and <hdyoutubedownloaderfree.com> domain names in connection with any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent offers Internet users software which supposedly enables them to download and save content from Complainant’s <youtube.com> website, a direct violation of Complainant’s YouTube Terms of Service. Previous Panels have held that using an infringing domain to violate Complainant’s YouTube Terms of Service does not constitute a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (no rights or legitimate interests created by the respondent’s use of the domain name in connection 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 Services); see also Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (“the disputed domain name resolves to a website featuring “10YOUTUBE” in a brand-like manner, and purports to enable Internet users to download and save video clips from Complainant’s website, in direct violation of Complainant’s Terms of Service.”)
Complainant provides multiple screenshots of the resolving websites for the disputed domains, noting that they purport to offer Internet users the ability to download content from Complainant’s website. See Amend. Compl. Ex. 11. Additionally, Complainant provides a copy of its YouTube Terms of Service to establish that such actions are a violation. See Compl. Ex. 12. For the reasons stated above, this Panel finds Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <youtubetomp3dl.com> and <hdyoutubedownloaderfree.com> domain names in bad faith based essentially on three grounds: (a) Respondent had actual and/or constructive knowledge of Complainant’s rights in the YOUTUBE mark at the time Respondent registered and subsequently used the disputed domain names, (b) the disputed domain names are being used in a “brand-like manner throughout websites directly target Complainant’s YouTube service” to attract Internet users to download Respondent’s commercial products and (c) Respondent uses the disputed domain names to enable Internet users to violate Complainant’s YouTube Terms of Service.
Although constructive knowledge is insufficient for a finding of bad faith, Panels have found actual knowledge based on the fame and notoriety of a mark. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). See also Google LLC v. Kamskova S Evgenevna, FA1905001842393 (Forum June 6, 2019) (“Evidence that a mark is famous and extensively used can demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration of a disputed domain name.”). Complainant argues that the fame and uniqueness of the YOUTUBE mark makes it improbable that Respondent created the <youtubetomp3dl.com> and <hdyoutubedownloaderfree.com> domain names independently. This Panel agrees that Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark at the time it registered the disputed domain names.
Additionally, as stated above, Respondent uses the disputed domain names to offer Internet users software which purportedly downloads and saves an audio version of the video. See Amend. Compl. Ex. 11. Complainant provides articles discussing its company, along with rankings for where the Complainant’s <youtube.com> website sits for global traffic. In other words, Respondent uses the YOUTUBE mark both in the domain names and throughout its Websites in a brand-like manner to attract Internet users to its own websites to purchase Respondent’s services. Previous Panels have found that “efforts to increase profits for its business by creating consumer confusion and using…[Complainant’s mark] indicate bad faith registration and use according to Policy ¶ 4(b)(iv).” Printingforless.com v. Reno Printing for Less, FA1336600 (Forum Sept. 7, 2010); Victoria’s Secret Stores Brand Management, Inc. v. Lewis, FA1337417 (Forum Sept. 2, 2010) (finding that the similarity of respondent’s domain name and complainant’s mark evidenced an intention by respondent to capitalize on complainant’s fame and to profit by attracting Internet users to respondent’s website, revealing bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv)). Bad faith registration and use is evident from Respondent’s use of the Domain Name merely to attract consumers to its website and to promote Respondent’s own related business. See Google Inc. v. erc reklam, FA1675920 (Forum June 23, 2016) (respondent’s use of “domain names that incorporate complainant’s well-known trademark to promote a competing business, under circumstances strongly supporting an inference that respondent’s conduct is targeted directly at Complainant or its mark” evidenced bad faith registration and use); Zoetis Inc. v. VistaPrint Tech. Ltd., FA1646149 (Forum Dec. 8, 2015) (finding bad faith registration and use from “[r]espondent’s use of the domain name to advertise its own business” which constituted “an intentional attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.”).
What makes matters worse is that the software/services offered by Respondent through the disputed domain names encourages Internet users to violate Complainant’s Terms of Services for the services it provides in connection with the YOUTUBE mark. By offering such services, Respondent disrupts Complainant’s business and reaps financial reward, another classic factor of bad faith upheld by Panels under Policy ¶¶ 4(b)(iii) and (iv). 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 provides screenshots of the landing pages for both disputed domains, which show Respondent’s offer to Internet users for software to download content from Complainant’s website, which disrupts Complainant’s business. See Amend. Compl. Ex. 11. Additionally, Respondent purports to offer a “pro version” for which it likely seeks to reap financial reward. Id.
For all of the reasons above, the Panel finds Respondent registered and uses the disputed domain names in bad faith under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubetomp3dl.com> and <hdyoutubedownloaderfree.com> domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: February 15, 2021
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