Google LLC v. Konstantin Vorobyov
Claim Number: FA2110001970564
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Konstantin Vorobyov (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtube2mp3.net>, registered with NameCheap, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2021; the Forum received payment on October 26, 2021.
On October 26, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <youtube2mp3.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@youtube2mp3.net. Also on November 1, 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 November 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Google LLC, is the owner of a video sharing and social media platform called YouTube.
Complainant has rights in the YOUTUBE mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
The <youtube2mp3.net> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark, added the generic number “2,” the generic term “mp3,” and the “.net” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <youtube2mp3.net> domain because Respondent is not commonly known by the at-issue domain name and is not authorized to use Complainant’s YOUTUBE mark. Additionally, Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain to encourage users to violate Complainant’s terms of service and redirect to users to a website offering software for download.
Respondent has registered and uses the <youtube2mp3.net> domain name in bad faith because Respondent registered and uses the at-issue domain to disrupt Complainant’s business and attract users for financial gain. Further, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark given the mark’s fame.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the YOUTUBE mark.
Complainant’s rights in the YOUTUBE mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <youtube2mp3.net> domain name to facilitate a service that enables internet users to directly violate Complainant’s YouTube Terms of Service by downloading YOUTUBE content. Respondent also offers a pay-per-click link offering related software for downloading.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the YOUTUBE mark demonstrates Complainant’s rights in such mark for the purposes of 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 at-issue domain name consists of Complainant’s YOUTUBE trademark appended by the term “2” (“two” or “to”) and “mp3,” with all followed by the top level domain name “.net.” The differences between the at-issue <youtube2mp3.net> domain name and Complainant’s YOUTUBE trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Indeed, the term “mp3,” a popular media file format, is suggestive of Complainant’s media sharing business and thus only adds to any confusion between Respondent’s <youtube2mp3.net> domain name and Complainant’s YOUTUBE mark. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <youtube2mp3.net> domain name is confusingly similar or identical to Complainant’s YOUTUBE trademark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue 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 at-issue domain name identifies the domain name’s registrant as “Konstanin Vorobyov” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <youtube2mp3.net> domain name. The Panel therefore concludes that Respondent is not commonly known by the <youtube2mp3.net> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar <youtube2mp3.net> domain name to address a website that displays Complainant’s YOUTUBE trademark and is used to facilitate local download of YOUTUBE content contrary to YOUTUBE’s terms of service. The website addressed by the at-issue domain name also features a pay-per-click link to another website that offers related conversion software. Respondent’s use of the confusingly similar domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Google LLC v. Cang hua / Canghua, FA 1921973 (Forum Dec. 28, 2020) (“Encouraging Internet users to violate a complainant’s terms of service does not amount to a bona fide offer of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <youtube2mp3.net> domain name was registered and used in bad faith. As discussed below without limitation, circumstances are present which permit the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned regarding rights and legitimate interests, Respondent offers services on its <youtube2mp3.net> website which enable website visitors to breach Complainant’s YouTube Terms of Service regarding the downloading of YOUTUBE content without authorization. Respondent’s offering of services, directly or indirectly, that facilitate the downloading of content from YOUTUBE in violation of Complainant’s terms of use is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the domain name per Policy ¶ 4(b)(iii). See Google LLC v. Domain Manager, FA 1755084 (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 PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Moreover, Respondent’s <youtube2mp3.net> website contains what appears to be a pay-per-click link to software which purports to allow the download of YOUTUBE content. This too, shows bad faith under Policy ¶ 4(b)(iii). See Allianz of Am. Corp. v. Bond, FA 680624, (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting);
Finally, Respondent had actual knowledge of Complainant’s rights in the YOUTUBE mark when it registered <youtube2mp3.net> as a domain name. Respondent’s actual knowledge is evident from the worldwide notoriety of Complainant’s YOUTUBE trademark; from Respondent’s references to Complainant on the <youtube2mp3.net> website, including the display of Complainant’s YOUTUBE mark; as well from as Respondent’s use of the domain name to facilitate downloading YOUTUBE content as discussed elsewhere herein. Respondent’s registration and use of its confusingly similar domain name with prior knowledge of Complainant’s rights therein further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtube2mp3.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 30, 2021
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