Google LLC v. Host Master / 1337 Services LLC
Claim Number: FA2105001943836
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 <youtubemp3.click>, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2021; the Forum received payment on May 4, 2021.
On May 4, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <youtubemp3.click> 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 May 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@youtubemp3.click. Also on May 10, 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 June 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
The YOUTUBE mark is a coined term that was created by its then-owner YouTube, Inc. in February 2005 for use as the brand of a video sharing service. The YouTube.com website was launched on April 24, 2005, and the YOUTUBE mark and related logos have been prominently featured since then at the website and otherwise in marketing for the service. Complainant has rights in the YOUTUBE mark through Complainant’s registration of the mark with the State Administration for Industry and Commerce of China (“SAIC”) (e.g. Reg. No. 897049, registered March 1, 2006). Respondent’s <youtubemp3.click> is confusingly similar to Complainant’s YOUTUBE mark as it fully incorporates Complainant’s YOUTUBE mark and merely adds: (i) the non-distinctive, generic term “MP3” and (ii) the non-distinctive top-level domain “.click.”
Respondent lacks rights or legitimate interests in the <youtubemp3.click> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the YOUTUBE mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name in connection with a website that enables Internet users to directly violate Complainant’s YouTube Terms of Service. Additionally, Respondent diverts Internet users away from Complainant’s website to Respondent’s website that distributes malware software.
Respondent registered and uses the <youtubemp3.click> domain name in bad faith. First, Respondent has a history of bad faith registration. Respondent also uses the YOUTUBE mark to attract Internet users to Respondent’s disputed domain name. Next, Respondent uses the disputed domain name to enable users to violate Complainant’s Terms of Service and to distribute malware software. Furthermore, Respondent had actual knowledge of Complainant’s rights to the YOUTUBE mark prior to registering the disputed domain name based on Respondent’s use of Complainant’s famous mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <youtubemp3.click> domain name.
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”).
Complainant asserts 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). 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).”). The Panel finds that Complainant has demonstrated rights in the YOUTUBE mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <youtubemp3.click> is confusingly similar to Complainant’s YOUTUBE mark as it fully incorporates Complainant’s YOUTUBE mark and merely adds: (i) the non-distinctive, generic term “MP3” and (ii) the non-distinctive top-level domain “.click.” The addition of a generic term and a top-level-domain fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”). The Panel finds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <youtubemp3.click> domain name as Respondent is not commonly known by the disputed domain name 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 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).”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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 name lists the registrant as “Host Master,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the YOUTUBE mark. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <youtubemp3.click> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name in connection with a website that enables Internet users to directly violate Complainant’s YouTube Terms of Service. 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). Complainant provides screenshots showing that Respondent’s resolving website encourages and claims to enable Internet users to download content from Complainant’s YouTube website in an MP3 format, a violation of Complainant’s YouTube Terms of Service. The Panel finds that 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).
Complainant also argues that Respondent fails to use the <youtubemp3.click> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to divert Internet users away from Complainant’s website to Respondent’s website that distributes malware software. Diverting Internet users to a website that distributes malware software is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant provides screenshots showing that Respondent’s website is hyperlinked to another domain name that distributes multiple computer viruses. The Panel finds that 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) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends Respondent registered and uses the <youtubemp3.click> domain name in bad faith as Respondent has a history of bad faith registrations. A respondent’s prior adverse UDRP history can demonstrate 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). Complainant argues that Complainant recently brought two successful UDRP complaints concerning the <youtubemp3.today> and <youtubemp3org.me> domain names, both owned by Respondent. This is evidence of bad faith per Policy ¶ 4(b)(ii)).
Complainant also contends Respondent registered and uses the <youtubemp3.click> domain name in bad faith as Respondent uses the YOUTUBE mark to attract Internet users to Respondent’s disputed domain name. Registering a confusingly similar domain name to attract Internet users 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)). Complainant argues that given Respondent’s use of YOUTUBE in the Domain Name 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. This is evidence of bad faith per Policy ¶ 4(b)(iv)).
Complainant also contends Respondent registered and uses the <youtubemp3.click> domain name in bad faith as Respondent uses the disputed domain name to enable users to violate Complainant’s Terms of Service and to distribute malware. Using a disputed domain name to enable users to violate a complainant’s terms of service or to distribute malware 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); see also Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii). Complainant provides screenshots showing Respondent uses the disputed domain name to enable users to violate Complainant’s Terms of Service and in connection with malware distribution. This is evidence of bad faith per Policy ¶ 4(a)(iii).
Complainant contends Respondent registered the <youtubemp3.click> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the YOUTUBE mark prior to registering the disputed domain name based on Respondent’s use of Complainant’s mark. Use of a mark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant argues that given the extensive use, media coverage and fame of Complainant’s YOUTUBE mark, Complainant’s worldwide trademark filings, Respondent’s registration of the Domain Name that wholly incorporate the YOUTUBE mark, and Respondent’s direct references to Complainant’s YouTube service on Respondent’s website, it is inconceivable that Respondent registered the disputed domain name independently and without actual knowledge of Google’s YOUTUBE mark. The Panel finds that Respondent had actual knowledge of Complainant’s mark and registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <youtubemp3.click> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
June 8, 2021
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