Google LLC v. Host Master / 1337 Services LLC
Claim Number: FA2103001935183
Complainant is Google LLC ("Complainant"), represented by John C. Nishi of Dickinson Wright PLLC, Michigan, USA. Respondent is Host Master / 1337 Services LLC ("Respondent"), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubemp3org.me>, registered with Tucows Domains Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2021; the Forum received payment on March 2, 2021.
On March 3, 2021, Tucows Domains Inc. confirmed by email to the Forum that the <youtubemp3org.me> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@youtubemp3org.me. Also on March 8, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant (together with a predecessor in interest) has delivered digital content and provided related services under the YOUTUBE mark since 2005. YouTube rapidly became the leading online video sharing site, and now has more than 2 billion monthly logged-in users and localized versions in more than 100 countries. Complainant owns longstanding trademark registrations for YOUTUBE in the United States, Saint Kitts and Nevis, and other jurisdictions worldwide. Complainant claims that the mark is famous, citing a previous decision under the Policy recognizing it as such. See Google Inc. v. Alex Dori, FA 1623672 (Forum July 13, 2015).
Respondent registered the disputed domain name <youtubemp3org.me> in September 2017. The domain name is being used for a website that displays the YOUTUBE mark at the top of the page. The website encourages and enables users to download and convert content from Complainant's YouTube website in violation of the YouTube Terms of Service. Complainant states that the website also includes pay-per-click links to other websites, and causes a virus warning notification to be displayed on the user's computer. The website does not contain a disclaimer or other clarification informing users that it is not associated with Complainant. Complainant states further that it has not authorized Respondent to register the disputed domain name; that Respondent is not affiliated with, associated with, or otherwise endorsed by Complainant; and that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <youtubemp3org.me> is confusingly similar to its YOUTUBE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <youtubemp3org.me> incorporates Complainant's registered YOUTUBE trademark, adding the generic terms "mp3" and "org" and appending the ".me" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Google LLC v. Host Master / 1337 Services LLC, FA 1933662 (Forum Mar. 29, 2021) (finding <youtubemp3.today> confusingly similar to YOUTUBE); Google LLC v. Abbigail Abril / AbrilAbbigail, FA 1926541 (Forum Feb. 12, 2021) (finding <youtubemp3.app> and <youtube3mp3.org> confusingly similar to YOUTUBE). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a misleading website that displays Complainant's trademark, encourages and enables users to violate Complainant's YouTube Terms of Service, and contains pay-per-click links and other advertisements. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Google LLC v. Chen Hui, FA 1935156 (Forum Mar. 31, 2021) (finding lack of rights or interests in similar circumstances); Google LLC v. Host Master / 1337 Services LLC, FA 1933662, supra (same); Google LLC v. Abbigail Abril / AbrilAbbigail, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's famous mark and is using it for a misleading website that displays the mark, encourages users to violate Complainant's terms of service, and contains per-click links and other advertisements. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Google LLC v. Chen Hui, supra (finding bad faith in similar circumstances); Google LLC v. Host Master / 1337 Services LLC, FA 1933662, supra (same); Google LLC v. Abbigail Abril / AbrilAbbigail, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubemp3org.me> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 5, 2021
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