DECISION

 

Google LLC v. Hui Chen / FoxPDF Software Inc / Chen Hui

Claim Number: FA2104001940677

 

PARTIES

Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA.  Respondent is Hui Chen / FoxPDF Software Inc / Chen Hui (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <youtube-mp3.online> and <onlineyoutube.com>, registered with West263 International Limited; Chengdu West Dimension Digital Technology Co., Ltd.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 7, 2021; the Forum received payment on April 7, 2021. The Complaint was received in English.

 

On April 8, 2021, West263 International Limited; Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <youtube-mp3.online> and <onlineyoutube.com> domain names are registered with West263 International Limited; Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. West263 International Limited; Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the West263 International Limited; Chengdu West Dimension Digital 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 13, 2021, the Forum served the English Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 3, 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@youtube-mp3.online, postmaster@onlineyoutube.com.  Also on April 13, 2021, the Chinese 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 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that there is significant overlap in the registrant records for the Domain Names. For instance, the Domain Names each list “Chen Hui” or “Hui Chen” as the owner’s first and last name. In addition, the owner email address for each of the Domain Names is foxpdf@163.com. Each owner also resides in the same city, namely, Mian Yang, China. In addition, Respondent is using the Domain Names in an identical manner, namely, in connection with a commercial website that encourages and claims to enable Internet users to download and save content from Complainant’s YouTube website in violation of Complainant’s YouTube Terms of Services. See Compl. Annex 11.

                                                      

The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.

 

The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.

 

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language.  After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    The YOUTUBE mark is a coined term that was created by its then-owner YouTube, Inc, in connection with its video sharing service. Complainant has rights in the YOUTUBE mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,525,802, registered October 28, 2008). See Compl. Annex 10.  Respondent’s <youtube-mp3.online> and <onlineyoutube.com> domain names are identical or confusingly similar to Complainant’s YOUTUBE mark as they merely add: (i) the non-distinctive, generic term “mp3” and “online,” (ii) a hyphen, and (iii) the non-distinctive top-level domain “.online” and “.com.”

 

2.    Respondent lacks rights or legitimate interests in the <youtube-mp3.online> and <onlineyoutube.com> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the YOUTUBE mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses the disputed domain names in connection with websites that enables Internet users to directly violate Complainant’s YouTube Terms of Service and offers pay-per-click advertisements.

 

3.    Respondent registered and uses the <youtube-mp3.online> and <onlineyoutube.com> domain names in bad faith. Respondent has a history of bad faith registration. Additionally, Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s disputed domain name. Respondent also uses the disputed domain names to enable users to violate Complainant’s Terms of Service and to display pay-per-click advertising. Furthermore, Respondent had actual knowledge of Complainant’s rights to the YOUTUBE mark prior to registering the disputed domain names based on Respondent’s use of Complainant’s famous mark.

 

B.   Respondent

1.    The Respondent failed to respond.

 

FINDINGS

1.    Respondent’s <youtube-mp3.online> and <onlineyoutube.com> domain names are confusingly similar to Complainant’s YOUTUBE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <youtube-mp3.online> and <onlineyoutube.com> domain names.

 

3.    Respondent registered and used the <youtube-mp3.online> and <onlineyoutube.com> domain names in bad faith.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the YOUTUBE mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 3,525,802, registered October 28, 2008). See Compl. Annex 10. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated rights in the YOUTUBE mark per Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <youtube-mp3.online> and <onlineyoutube.com>  domain names are or confusingly similar to Complainant’s YOUTUBE mark as they merely the non-distinctive, generic term “mp3” and “online,” a hyphen, and the non-distinctive top-level domain “.online” and “.com.” The addition of generic terms, a hyphen, and a TLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”); see also Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) (finding the <morgan-stanley.xyz> domain name identical to complainant’s MORGAN STANLEY mark, because “the use of a hyphen and addition of a gTLD are irrelevant in determining the identical or confusingly similar nature of a disputed domain name under Policy ¶ 4(a)(i).”). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then 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 contends Respondent lacks rights or legitimate interests in the <youtube-mp3.online> and <onlineyoutube.com> domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the YOUTUBE mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrants as “Hui Chen / Chen Hui” and “Chen Hui / FoxPDF Software Inc,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the YOUTUBE mark. See Amend. Compl. Annex 16. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the <youtube-mp3.online> and <onlineyoutube.com>  domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names in connection with websites that enables Internet users to directly violate Complainant’s YouTube Terms of Service and pay-per-click advertisements. Using a domain name to enable a violation of terms of service may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per 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 <listentoyoutube.com> 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). Additionally, using a disputed domain name in connection with advertising may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides screenshots showing the <youtube-mp3.online> and <onlineyoutube.com> domain names resolving to a commercial websites that encourages and claims to enable Internet users to download and save content from Complainant’s YouTube website, which violates Complainant’s YouTube Terms of Service. See Compl. Annex 11. Complainant also provides screenshots showing the disputed domain names both redirect Internet users to the <onlineconvert.com> domain name, which features pay-per-click advertising from which Respondent presumably receives pecuniary reward. See id. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant contends Respondent registered and uses the <youtube-mp3.online> and <onlineyoutube.com> domain names in bad faith as Respondent has a pattern of bad faith registrations. Prior adverse UDRP decisions can evidence bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico,  FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Here, Complainant provides a screenshot showing Respondent was the respondent in another UDRP proceeding involving a domain name that incorporates Google’s YOUTUBE mark. See Google LLC v. Chen Hui, FA1935156 (Forum Mar. 31, 2021) (ordering the transfer of the domain name to Google); see also Compl. Annex 15. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(ii).

 

Complainant also contends Respondent registered and uses the <youtube-mp3.online> and <onlineyoutube.com> domain names in bad faith as Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s disputed domain names that feature pay-per-click advertisements. Registering a confusingly similar domain name to attract Internet users to websites feature pay-per-click advertisements can demonstrate bad faith per Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain name and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Here, Complainant argues that given Respondent’s use of YOUTUBE in the Domain Names and in a brand-like manner throughout a website that directly targets Complainant’s YouTube service, Respondent clearly is using the YOUTUBE mark to attract Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the service promoted on that website. The Panel recalls Complainant also provides screenshots showing the disputed domain names both redirect Internet users to the <onlineconvert.com> domain name, which features pay-per-click advertising from which Respondent presumably receives pecuniary reward. See id. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv)).

 

Complainant also contends Respondent registered and uses the <youtube-mp3.online> and <onlineyoutube.com> domain names in bad faith as Respondent uses the disputed domain name to enable users to violate Complainant’s Terms of Service. Using a disputed domain name to enable users to violate a complainant’s terms of service can demonstrate bad faith per Policy ¶ 4(a)(iii). See Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (finding use of the <listentoyoutube.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). Complainant shows Respondent uses the disputed domain names to enable users to violate Complainant’s Terms of Service. See Compl. Annex 11. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).

 

Finally, Complainant contends Respondent registered the <youtube-mp3.online> and <onlineyoutube.com> domain names in bad faith as Respondent had actual knowledge of Complainant’s rights to the YOUTUBE mark prior to registering the disputed domain names based on the famous nature of Complainant’s mark. Worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Here, Complainant argues that the fame of Complainant’s YOUTUBE demonstrates Respondent’s actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. See Google Inc. v. Alex Dori, FA1623672 (Forum July 13, 2015) (“Complainant has registered trademarks for the mark YOUTUBE dating back to 2006. Its mark is famous around the world.”). The Panel agrees and finds Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <youtube-mp3.online> and <onlineyoutube.com> domain names be TRANSFERRED from Respondent to Complainant.       

                                                                                                                                                                                                                                              

 

John J. Upchurch, Panelist

May 24, 2021